There has been a lot of buzz among trademark attorneys about a recent uptick in failure to function (FTF) refusals issued by the U.S. Patent and Trademark Office (USPTO). Several recent trademark applications that were refused due to a failure to function, namely MAMA BEAR and TACO TUESDAY illustrate the uncertainty that goes along with this type of refusal. What is an FTF refusal, and why is this type of refusal drawing so much ire?
In order to be registrable, a trademark must:
● Function as a trademark; and
● Be distinctive
Before examining what qualifies as “functioning as a trademark,” it would be helpful to have a quick review of the meaning of trademark distinctiveness.
Trademark Distinctiveness (the Abercrombie Scale)
Attorneys have long relied on the Abercrombie scale, which is a guideline for determining the strength and by extension, protectability of a trademark. Abercrombie & Fitch Co. v. Hunting World, 537 F.2d 4 (2nd Cir. 1976).
The 5 main categories of trademark distinctiveness, from weakest to strongest, are as follows: generic, descriptive, suggestive, arbitrary, and fanciful. These categories and their meanings are summarized below:
Generic
A generic word is a common term used to describe the genus of a product or service. Examples include, SHOES brand SHOES, BEER brand BEER and CAR WASH brand CAR WASH. Generic terms are not registrable as trademarks because allowing their registration would preclude competitors from using common terms required to describe or name the goods or services.
However, a generic term used to describe a completely unrelated good or service is not generic but arbitrary (explored below). Arbitrary trademarks are registrable. If a generic term is a part of a trademark with additional wording, the mark may be registrable (even if it describes the goods or services) as long as there is other non-generic wording in the trademark. Generally, trademark practice requires the disclaimer of any generic terms from the trademark, meaning that the owner of the mark does not claim exclusive use of the disclaimed term. Therefore, a trademark for ALPHABET BEER for “beer” has ALPHABET as the distinctive portion of the trademark and BEER disclaimed from the registration.
Descriptive Trademarks
Descriptive trademarks are trademarks that describe an ingredient, quality, characteristic, function, feature, purpose or use of the product or service. Descriptive trademarks are not registrable on the Principal Trademark Register absent acquired distinctiveness. Acquired distinctiveness is when the consuming public has become accustomed to associating the brand with the product or service. For a descriptive trademark this usually involves significant use over a period of time, typically 5 years. Descriptive trademarks that do not have the requisite 5 years of acquired distinctiveness can be registered, but only on the Supplemental Register. The Supplemental Register is a secondary trademark register of the USPTO. In some cases, descriptive trademarks can acquire distinctiveness faster because they become commonly known in a short period of time.
Descriptive trademarks are easier to market, because they describe the product or service, but harder to protect and enforce, because often there may be similar uses already existing in the marketplace.
Suggestive Trademarks
Suggestive trademarks are the first category of trademark to be viewed as ‘inherently distinctive’ and therefore not subject to a refusal for descriptiveness or genericness. However, the line between suggestive and descriptive can be blurry. In some cases, a suggestive trademark can be viewed as descriptive or a descriptive trademark can be viewed as suggestive. Suggestive trademarks do not describe but rather evoke or conjure the goods or services associated with the mark.
Arbitrary and Fanciful Trademarks
The best trademarks, in terms of registrability, enforceability, and protectability are those described as arbitrary or fanciful.
Arbitrary trademarks pair an existing dictionary word/term with a completely unrelated product or service.
Fanciful trademarks are made-up words or coined terms that did not previously exist.
The downside of arbitrary and fanciful trademarks is that they are harder to market because the owner of the mark needs to create a link between the mark and the good or service in the minds of consumers, rather than have it described by the trademark itself. However, arbitrary and fanciful trademarks are easier to register and easier to enforce than descriptive trademarks.
A Trademark Must Function as a Trademark
In addition to the requirement that a trademark be distinctive, a term, phrase or image must function as a trademark to be registrable. If a proposed trademark fails to function, it is not protectable. FTF does not fit within the Abercrombie Scale. A refusal based on FTF means that the word or phrase or symbol is not a trademark, and will not function as an indicator of source. Functioning as an indicator of the source of the goods or services is the primary purpose of a trademark.
Words or phrases that are deemed to be informational, laudatory, or commonplace may be refused registration based on a failure to function. These types of statements may be used to convey ordinary or familiar concepts or sentiments, or social, political, religious messages that are in common use. In short, the word or phrase does not function as a trademark when it is so widely used that consumers would not view it to identify applicant’s goods or services.
The policy behind a generic or descriptiveness refusal is to prevent a monopoly on common terms used to describe a good or a service. The policy behind an FTF refusal is to prevent commercial entities from securing monopolies on universally-used terms, phrases, and slogans, which need to be free for unencumbered public use.
Ornamental Refusal
An ornamental refusal is a type of FTF refusal, commonly associated with clothing and other goods where the use is considered to be decorative, rather than an indicator of source. Ornamental refusals are usually issued in cases where the specimen depicts an image or phrase across the front of a t-shirt or hat, as opposed to on a hangtag or label. However, small depictions of words or designs on a shirt or a hat may function as an indicator of source. One of the most famous examples is the Lacoste Alligator, which appears as a crest on the shirt.
Failure to Function and the Abercrombie Scale – A Comparative Overview
As discussed above, FTF does not fit into the Abercrombie scale. So how does a proposed trademark that fails to function as a source indicator compare to the categories in the Abercrombie scale? The answer is sometimes surprising or downright puzzling.
Failure to Function Versus Generic
A failure to function is not the same as refusal on the ground that a trademark is generic. Unlike a generic trademark, the proposed word or phrase doesn’t describe the genus of the good or service. Rather, it is common due to common public use.
Failure to Function Versus Descriptiveness
Unlike a descriptiveness refusal, an FTF refusal can’t be overcome by moving an application to the Supplemental Register or by showing that the mark has acquired distinctiveness.
Failure to Function Versus Arbitrary
In two recent and notable FTF refusals, the phrases MAMA BEAR[1]for apparel and TACO TUESDAY[2]for “downloadable audiovisual works, advertising & marketing, entertainment and podcasting services” were both denied registration based on a failure to function. At first glance, the phrases MAMA BEAR and TACO TUESDAY are arbitrary in connection with the aforementioned goods and services. Both MAMA BEAR and TACO TUESDAY are not generic, descriptive, or suggestive of the goods/services, and nor are they fanciful. These marks are arbitrary according to the Abercrombie scale. They have no connection to and do not describe the goods or services. What happened?
MAMA BEAR
In the MAMA BEAR case, the applicant attempted to secure a trademark registration for MAMA BEAR for apparel. The Trademark Trial and Appeal Board (TTAB) ultimately upheld the Examiner’s refusal to register due to FTF. The catalyst may have been numerous co-existing common law uses that were ornamental in nature (use of the phrase MAMA BEAR on the front of the shirt, rather than on the hangtag). The Applicant argued that the mark was registrable, as there were many co-existing trademark registrations for MAMA BEAR for a variety of goods and services. Nonetheless, the Examiner excused these away by singing the common song, “prior decisions of other Examiners have no bearing on current Examination” and also distinguished the marks as having additional matter. The final conclusion of this case is that while perhaps registrable for some goods, the ability to register for others can be precluded by numerous co-existing ornamental uses.
One poignant lesson learned in the MAMA BEAR case was the trademark owner waited several years to file for her trademark. By the time she acted, there were many competitors/infringers. Perhaps if the application would have been filed earlier, the USPTO would have registered MAMA BEAR without incident[3].
TACO TUESDAY
TACO TUESDAY was a trademark application that was refused due to FTF, but the Applicant did not submit a response. This case made the news because the Applicant was a famous basketball player, Lebron James. The refusal is interesting for a few reasons. One is that the goods and services of the applicant were completely unrelated to food or dining. The trademark office cited “wide use” of the phrase as a basis for the refusal. However, a quick review of the record shows that the evidence proffered by the trademark Examiner to support the FTF refusal all appear to be uses related to restaurants or food. There was no evidence of use of TACO TUESDAY for other goods or services. Interestingly enough, a review of the USPTO database shows that a trademark application for TACO TUESDAY filed in 2020[4] for “grills for tortilla shells” was granted registration in 2021 with no FTF refusal. There is also a pre-existing registration for TACO TUESDAY for “restaurant services,” with the registration dating back to 2009, perhaps when the phrase was less prevalent.
Failure to Function versus Evidence of Common Use
One concern is the evidence the USPTO uses to support an FTF refusal. The USPTO commonly relies on evidence showing that the purported trademark is commonly used, and therefore fails to function as a source indicator.
However, a tool of trademark practitioners when arguing against a confusion refusal is by providing evidence that a trademark is commonly used, and is therefore weak (descriptive) or diluted (commonly used, whether descriptive, suggestive or arbitrary). The evidence is used to support the legal assertion that the marks can all coexist without consumer confusion. Typically, the assertion of no consumer confusion is supported with the evidence of many coexisting uses in commerce.
A question therefore arises: would there be instances of overlap between common use indicating a weakness or dilution of a trademark versus common use indicating a failure to function as a source identifier? While one instance is fatal to trademark protection, the other may help secure trademark protection. Where is the line drawn?
An Overview of the Abercrombie Scale and a Failure to Function
| Generic | Descriptive | Suggestive | Arbitrary | Fanciful | Failure to Function | |
| Registrable | No | With acquired distinctiveness | Yes | Yes | Yes | No |
| Enforceable | No | With additional difficulty | Yes | Yes | Yes | No |
| Examples | Smart keyboard
Vitamin Shoppe Corn Thins Cardless Cash Certified Bison |
American Airlines
Container Store Whole Foods Market The Home Depot |
Coppertone
Netflix Speedibake Durex YouTube Mastercard |
Apple
Caterpillar Domino Delta Amazon Virgin Uber Adobe Mars |
Kodak
Xerox Polaroid Clorox Pantene Nivea Reebok |
Once a marine always a marine
Drive safely FRAGILE TACO TUESDAY MAMA BEAR THE BEST BEER IN AMERICA |
Conclusion
While well established, FTF refusals are becoming more common in the USPTO. An FTF refusal can be fatal to a trademark application. The best advice to avoid such a refusal is to file earlier rather than later (an Applicant can never predict if their phrase will be the next FOMO) and to avoid obvious errors such as clearly ornamental uses. These strategies can help to minimize the chances of receiving an FTF refusal.
[1] In re Sarah Marie Duncan d/b/a Loved by Hannah and Eli, Inc. Serial No. 86923714
[2] U.S. Trademark Application Serial No. 88/579,771 for TACO TUESDAY
[3] The TTAB denied this argument stating that being the first user of a mark doesn’t mean the mark was registrable. . However, in 2013, when MAMA BEAR was allegedly first used, it seems unlikely to have been refused due to an FTF.
[4] After the subject TACO TUESDAY was filed and rejected due to an FTF.