One of the most basic concepts in trademark law is that a trademark must function as a trademark. Specifically, a trademark cannot register with the U.S. Patent and Trademark Office (USPTO) unless it functions as a trademark. See TMEP 1202.19(e). The Trademark Trial and Appeal Board (TTAB) in 1977 summed it up perfectly, stating that “[b]efore there can be registration, there must be a trademark.” In re Bose Corp., 192 USPQ 213, 215 (C.C.P.A. 1976).
Examining attorneys examine trademark applications to ensure the applied-for mark functions as a trademark. In deciding, the examining attorney makes this determination without respect to the applicant’s intention. Thus, it is critical to determine “how the relevant public perceives the term sought to be registered” when addressing whether or not the mark functions as a trademark. In re Greenwood, 2020 USPQ2d 11439, at 2* (TTAB 2020).
A common instance of where a trademark can fail to function as a mark is when registering clothing. In particular, when trademarks are screen-printed across the front of T-shirts, applicants should pay particular attention. There is no per se rule that screen-printing a trademark on a shirt cannot function as a trademark. However, applicants need to take care to ensure that consumers are not purchasing the shirts for simply the message perceived. In fact, when any good or service is bought based on a common message displayed, the mark fails to function. Even conventional trademark usage of a common message can lead to a failure to function refusal.
It is important to consider all aspects and requirements for trademark registration from the onset. Overall, it is important to recognize when an applicant may face resistance. In particular, if there is a chance that a trademark may be seen as informational, applicants can increase their chances of avoiding a failure to function refusal by beefing up proper trademark use. For example, placing the TM symbol next to the mark and using their marks in a conventional trademark manner. Additionally, applicants can educate the public that their mark is a brand, rather than a message.