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Specimen-Does Not Function Refusals-Office Action(s) from USPTO

There are two basic possibilities: No Objections- the Trademark examiner allows the mark (no Office Action) and it is Published for Opposition; or Refusal-examiner refuses the mark for not meeting requirements for federal registration and issues an Office Action giving the applicant a chance to respond to issues raised. Some actual redacted refusals for trademarks that do not “function as a mark are shown below.

Applicants (or their representative) must address each issue raised by the examining attorney and responses to office actions (ROA) must be received within 6 months from the mailing date on the office action. If applicants (or their representatives) do not submit a timely response to an office action, their applications will be declared abandoned.

If the response does not overcome all rejections, the examining attorney will issue another refusal or a final refusal. [Some trademark applications take years to cycle through all the rejections and replies.]

An examiner may suggest registration on the Supplemental Register as an alternative to the Principal Register to overcome a failure to function as a trademark or other reasons. See Comparison of Principal Register and Supplemental Register. Please note that a Supplemental Registration is a significant loss of rights over a Principal Registration and that many refusals can be overcome with the correct responses.

To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO.

For Oppositions based on Merely Descriptive trademark applications, see Merely Descriptive Oppositions.

Example of Actual (redacted) USPTO Statutory Refusals

These are actual “failure to function” refusals from the USPTO. Even though the examiners often suggest ways that the applicants may overcome the refusals, the applicants were unable to overcome all the refusals and the marks were all abandoned after these or after several other refusals.

Sections 1, 2 and 45 - Failure to Function

Refusal—Title of a Single Work

 Registration is refused because the proposed mark, as used on the specimen of record, is the title of a single creative work, namely, the title of a specific CD, and thus fails to function as a trademark for such goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §1051, 1052 and 1127; In re Cooper, 254 F.2d 611, 117 USPQ 396 (C.C.P.A. 1958), cert. denied, 358 U.S. 840, 119 USPQ 501 (1958); In re Hal Leonard Publishing Corp., 15 USPQ2d 1574 (TTAB 1990); In re Scholastic Inc., 223 USPQ 431 (TTAB 1984); TMEP §1202.08.

 Applicant is advised that the name of a series of creative works may be registrable if the designation serves to identify and distinguish the source of the goods.  In re Scholastic Inc., 23 USPQ2d 1774 (TTAB 1992).  Therefore, if applicant uses the mark to identify a series, rather than a single work, then applicant should provide such evidence for the record so this refusal can be withdrawn.  Evidence of a series includes copies of multiple book covers or packaging for prerecorded works that show the mark as a source-identifier for the series as well as show the mark as distinguishable from the individual titles of the works.

 Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 Tradename Usage Failure

In the initial office action (as to the statement of use) dated June  13, 200x, the examining attorney refused registration because the proposed mark, as used on the specimen of record, is used only as a trade name to identify applicant’s business and does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate their source.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052 1127; see In re Walker Process Equip., Inc., 233 F.2d 329, 110 USPQ 41 (C.C.P.A. 1956); TMEP §1202.01.  Although a designation may function as both a trade name and a trademark, the Trademark Act does not provide for registration of matter that functions solely as a trade name.  In re Diamond Hill Farms, 32 USPQ2d 1383, 1384 (TTAB 1994); In re Univar Corp., 20 USPQ2d 1865, 1867 (TTAB 1991).

By way of response, the applicant argues use of the mark shows source indicating, trademark usage.  Specifically notes the wording XXXXX BRAND appears on a packaging label in which the goods are sold.  However, the fact that the proposed mark appears on packaging does not render trade name matter a trademark.  The determination of whether a trade name also functions as a trademark is based on a consideration of the manner in which the proposed mark is used and the probable impact on purchasers, as evidenced by the specimen(s) and any other information of record. Diamond Hill Farms, 32 USPQ2d at 1384.  The specimen shows the proposed mark used only to identify the applicant’s company and company address, using the same nondescript font for each.  The proposed mark is only used in this regard and is not used in such a manner as to distinguish itself as source indicator of the goods.  TMEP section 1212.01.

The applicant further urges that the use of the wording BRAND shows source indicating use.  However, the term BRAND is defined as a “trademark or distinctive name identifying a product or a manufacturer.”  See the attached entry from The American Heritage® Dictionary of the English Language, Fourth Edition.   As such the term may identify a company or manufacturer, that is, trade name usage, as well as a product, that is, trademark usage.

As shown on the specimen, with the wording in a small nondescript font in a corner of the label, between more the more prominent display of the net weight and a product serial number of some sort, in lettering smaller than the extensive and comparatively more prominent list of product ingredients, the wording can only be seen as trade name usage.

The applicant may overcome this refusal by submitting a substitute specimen showing proper trademark usage for each class of goods verified with an affidavit or signed declaration under 37 C.F.R. §2.20.  Pending receipt of the same, the trade name failure to function refusal is maintained and made FINAL.

Sections 1, 2 and 45 - Failure to Function

Registration is refused because the proposed mark solely identifies a particular character and does not function as a trademark or service mark for the identified services.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127; TMEP §§1301.02 et seq.; In re Hechinger Investment Co. of Delaware Inc., 24 USPQ2d 1057 (TTAB 1991); In re McDonald’s Corp., 229 USPQ 555 (TTAB 1985); In re Whataburger Systems, Inc., 209 USPQ 429 (TTAB 1980); In re Caserta, 46 USPQ2d 1088 (TTAB 1988); see also In re D.C. Comics, Inc. 689 F.2d 1042, 215 USPQ 394 (C.C.P.A. 1982) and Paramount Pictures Corporation v. Romulan Invasions, 7 USPQ2d 1897 (TTAB 1988); TMEP §1301.02(b).

The proposed mark is the design of a cartoon raccoon with its name “XXXXX XXXXX” and the specimen shows the proposed mark on the album cover.  According to the specimen, the proposed mark is being used solely to identify a character and does not serve to identify applicant’s goods or services. 

A character is registrable as a mark only where the record shows that it is also used in a manner that would be perceived by consumers as identifying and distinguishing the services in addition to identifying the character.  In re Hechinger Investment Co. of Delaware Inc., 24 USPQ2d at 1059.

Sections 1, 2 and 45 - Failure to Function

Mark on Specimen Does Not Function as a Mark; Only Names the Band

Registration is refused because the proposed mark, as used on the specimen of record, solely identifies the featured performers, that is, the band, on the sound recordings and does not function as a trademark for the goods themselves.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; In re Spirer, 225 USPQ 693 (TTAB 1985); Cf. In re Polar Music International AB, 714 F.2d 1567, 221 USPQ 315 (Fed. Cir. 1983); TMEP §1202.09(a).  In other words, the name on the specimen for the recording is simply the name of the band. 

Applicant may respond to this refusal by (1) submitting evidence that the mark has been used on at least two recordings, and (2) amending the identification of goods to state that the sound recordings comprise a series, i.e., series of pre-recorded compact discs, Digital Versatile Disk, audio cassettes, video cassettes, and phonograph records, all featuring music and/or musical performances; Downloadable musical sound recordings; Downloadable video recordings featuring music and/or musical performances, in Class 9.

Sections 1, 2 and 45 Ornamentation Refusal

Registration is refused on the Principal Register because the proposed mark, as used on the specimen of record, is a decorative or ornamental feature of the goods and would not be perceived as a mark by the purchasing public because it does not function as a trademark to identify and distinguish the applicant’s goods from those of others and to indicate their source.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; See In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985); In re David Crystal, Inc., 296 F.2d 771, 132 USPQ 1 (C.C.P.A. 1961); In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987); TMEP §§1202.03 et seq.  The specimen of record consists of a photograph of a t-shirt, and the proposed mark is ornamental as used on the specimen because the mark is emblazoned across the chest of the shirt.

 In connection with wording that is ornamental, “the size, location, dominance, and significance of the alleged mark as applied to the goods” are all relevant factors to consider in determining whether the proposed mark is inherently distinctive.  In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993); In re Astro-Gods Inc., 223 USPQ 621, 623 (TTAB 1984).  Although there is no prescribed method or place for affixation of a mark to goods, the location of a mark on the goods “is part of the environment in which the [mark] is perceived by the public and … may influence how [the mark] is perceived.”  In re Tilcon Warren Inc., 221 USPQ 86, 88 (TTAB 1984); see In re Paramount Pictures Corp., 213 USPQ 1111, 1115 (TTAB 1982).  Thus, where consumers have been conditioned to recognize trademarks in a certain location, as on the breast area of a shirt, ornamental matter placed in a different location is less likely to be perceived as an indication of source.  See TMEP §1202.03(b).

As to the size of the proposed mark appearing on the specimens, the larger the display relative to the size of the goods, the more likely that consumers will not view the ornamental matter as a mark.  See, e.g., In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988) (SUMO merely ornamental in part because the wording “appears in large lettering across the top-center portion of the T-shirts and caps”); International Order of Job’s Daughters v. Lindberg and Co., 633 F.2d 912, 208 USPQ 718 (9th Cir. 1980), cert denied 452 U.S. 941 (1982) (prominent display on jewelry was evidence that the proposed mark was being used in a non-trademark fashion).

The applicant may overcome the above-stated ornamental refusal by doing one of the following, as appropriate:

(1)   Claiming acquired distinctiveness by submitting evidence that the proposed mark has become distinctive of the applicant’s goods in commerce under Trademark Act Section 2(f), 15 U.S.C. §1052(f).  Evidence may consist of examples of advertising and promotional materials that specifically promote the subject matter for which registration is sought as a mark, dollar figures for advertising devoted to such promotion, dealer and consumer statements of recognition of the subject matter as a mark and any other evidence that establishes recognition of the matter as a mark for the goods.  See TMEP §§1202.03(d) and 1212.06 et seq; or

(2)   Submitting evidence that the proposed mark is an indicator of secondary source or sponsorship for the identified goods.  University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1405 (TTAB 1994); In re Olin Corp., 181 USPQ 182 (TTAB 1982).  That is, the applicant may submit evidence showing that the proposed mark would be recognized as a trademark or service mark through the applicant’s use of the proposed mark with goods or services other than those identified here.  In re Original Red Plate Co., 223 USPQ 836, 837 (TTAB 1984).  The applicant must establish that, as a result of this use on other goods or services, the public would recognize the applicant as the secondary source of, or sponsor for, the identified goods.  See TMEP §1202.03(c); or

(3)   Submitting a substitute specimen that shows proper non-ornamental trademark use, along with a statement that “the substitute specimen was in use in commerce at least as early as the application filing date,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); or

(4)   Amending the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.

Mark does not Function as a Trademark for Applicant’s Goods

Registration is refused because the proposed mark, as used on the specimen of record, does not function as a trademark to indicate the source of the identified goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; In re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987); TMEP §§1202 et seq.

The specimen of use consists of an advertisement for the goods.  The mark does not function as a trademark on the specimen because there is no showing that the mark is used with the goods or as a display associated with the sale of the goods.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984); TMEP §§904.05 and 904.07.  Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.04 et seq.

This refusal will be withdrawn if applicant submits both (1) a substitute specimen showing use as a trademark, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the application filing date,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.56 and 2.59(a); TMEP §904.09.

Answers to Office Actions

There are no canned answers on how to answer office actions for the rejections received because there are no typical rejections, registration of a mark is specific to the facts involved. (See Function As A Mark for more Office Actions.) Some rejections are dependent not only on the trademark being proposed (very fact specific) but also on how the application is filled out, especially the specimens submitted. Sometimes just a better specimen is all it takes. Sometimes a better identification of goods and services. Sometimes parts of the trademark must be disclaimed. Sometimes the applicable law must be examined and arguments made that are very specific to the actual words and designs being proposed. It depends on what is being rejected and why.

Not every office action has an answer, some proposed trademarks just do not comply with U.S. Trademark Law and do not qualify for common law protection because they lack distinctiveness or lack acquired secondary meaning or the capability of acquiring secondary meaning.

If your trademark has value and you want to preserve the trade identity rights that you have already invested and secure more rights through federal registration, it may be best to hire a legal representative to answer your office action as prescribed within the USPTO Trademark Rules and Procedures. The cost of having a Not Just Patents ® Legal Services provide your Response to Office Action (ROA) and/or Amendment to Allege Use (AAU)(after an Intent-to-Use application) may be less than what you think and the time saved may be months or years. Better yet, have Not Just Patents ® Legal Services prepare your application (including choosing the best specimens) from the beginning.

Not Just Patents ® Legal Services provide a broad range of services for Intellectual Property Protection. If you are unsure what type of product or service protection is best for your business or just have a question, please call–a brief initial consultation is free at 1-651-500-7590  . If you have already received a refusal, we can provide a quick and economical Response to Office Action (ROA). If you wish to oppose a trademark registration or file a cancellation on an existing registration, or are being opposed or canceled, we can provide quick and economical Notice of Opposition, Petition to Cancel or Answer. See Published for Opposition, Opposition Steps/Cancellation Steps for more information.

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Call 1-651-500-7590 or email for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Evolved Means, Method or Format-Is your trademark registration obsolete?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

USPTO Search Method for Likelihood of Confusion

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

Decrease Your Vulnerability to Cancellation

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Trademark Integrity: Are your IP Assets Vulnerable?

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®

How to Respond to Office Actions  Final Refusal

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 TTAB Document Service  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS, TEAS RF and TEAS plus  

Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks  

Likelihood of Confusion 2d  TMOG Trademark Tuesday

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses

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