01 Why it is issued
- Ornamentation: the wording, slogan or design is merely a decorative feature of the goods and does not identify their source. The USPTO notes that small designs or discrete wording on a pocket or breast area of a shirt may be seen as a trademark, while large slogans across the front may not.
- Title of a single creative work: the mark is the title of one book, film, recording or similar work. The USPTO says you cannot register the title of a single creative work, or a portion of one.
- Name of an author or artist: the name appears only to identify who wrote a work or performed a recording, with no evidence of a series of works that the name identifies as the source.
- Not goods in trade, or not services for others: the item is not sold or transported in commerce as its own product, or the activity is not a real service performed for the benefit of others.
02 What the examiner weighs
- Commercial impression — how the mark appears and what a customer would take from it.
- Practices of the trade — whether similar decoration is common on this kind of product.
- Secondary source — whether the matter is also used on other goods or services in a way that identifies a source.
- Series of works — for titles and names, whether there is evidence of a series rather than a single work.
- Independent value — for goods, whether the item has utility apart from promoting the applicant's main goods or services.
SourceUSPTO: Overview of common failure-to-function refusals
03 What to do, and what not to
Do this
- Read which type of failure-to-function refusal the examiner actually raised, because the options differ by type
- Look at your specimen as a customer would and ask whether the wording or design looks like a brand or like decoration
- Check whether the mark is used on a series of goods, or only on one item
- Consider a different specimen where the refusal is about how you showed the mark
- Calendar the response date printed on your Office action the day it arrives
Avoid this
- Do not assume that adding more evidence of sales fixes it; for some types, acquired distinctiveness is not available
- Do not argue that your slogan is famous if the specimen shows it only as a large decorative front print
- Do not describe a social media account or an internal tool as a service for others without evidence it is one
- Do not claim a book or film title as a mark for a single work; the USPTO says it cannot register
- Do not let the response period lapse while you decide; abandonment is what actually ends applications
04 Your options for responding
Failure to function is a family of refusals, not one. The right answer for an ornamental slogan on a t-shirt is not the right answer for a book title or a social media account, and some of the usual fixes are simply not available for some types. Work out which type is on your letter, look at how your specimen shows the mark, and keep an eye on the response date printed on the Office action. This is general information, not legal advice about your application.
05 Questions people actually ask
It means the examining attorney found that the mark, as shown, does not function as an identifier of the source of your goods or services. The USPTO says such a mark is refused under Sections 1, 2, and 45 of the Trademark Act on the Principal Register.
It is a failure-to-function refusal where the applied-for mark is merely a decorative feature or part of the dress of the goods. The USPTO says that small designs or discrete wording may be seen as trademarks on a shirt pocket or breast area, while large slogans across the front may not.
It depends on the type. The USPTO lists claiming acquired distinctiveness as an option for ornamentation, but says it cannot be claimed for the title of a single work, the name of an author or artist, or the goods in trade and services for others refusals.
For ornamentation and for author or artist names, the USPTO lists amending to the Supplemental Register as an option. For the title of a single work and for goods in trade or services for others, it says you cannot.
The USPTO says you cannot register the title of a single creative work, or a portion of one. It points to evidence of a series as a way to address the refusal, so a series title may be treated differently from a one-off title.
The USPTO's training material says that using a social media account to advertise and promote your own business is not a service provided for others. The services must be real, performed for the benefit of others and distinct from your main business.
Read the response date printed on your Office action in TSDR. Response periods have changed in recent years and vary by filing basis, so do not assume a period or rely on a date quoted by anyone, including us. Missing it abandons the application and the filing fee goes with it.
This guide is general information, not legal advice, and reading it does not create an attorney-client relationship. Only the response date printed on your own office action is authoritative.