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Failure to Function Trademark: The Impact of Popular Phrases

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For many business owners, the concept of a “failure to function” trademark is crucial yet often misunderstood. This issue arises when a phrase becomes so popular that it loses its distinctiveness, making it ineligible for trademark protection. Let’s delve into why this happens, the legal basis, and what it means for businesses. 

A trademark is a symbol, word, or phrase legally registered or established by use as representing a company or product. Its primary function is to identify the source of goods or services, distinguishing them from others in the market. However, not all phrases qualify for trademark protection, especially those that fail to function as a source identifier. 

Factors Determining Registrability 

The USPTO examines several factors to determine whether a mark functions as a trademark. One key factor is the commercial impression, which refers to how the mark is perceived by consumers in the marketplace. If consumers see the mark as identifying the source of goods or services, it is more likely to be registrable. Another important factor is the practices of the trade, which involves common practices within the industry regarding the use of similar marks. If the mark aligns with industry norms for identifying sources, it stands a better chance of being accepted. Additionally, the USPTO considers secondary source evidence, which includes proof that the mark is recognized by consumers as identifying a secondary source, such as a brand or company. This can be demonstrated through extensive use in commerce, advertising, and consumer recognition. Together, these factors help the USPTO assess whether a mark truly functions as a trademark, ensuring it serves its primary purpose of identifying the source of goods or services. 

The Case of Viral Phrases 

When a word or phrase goes viral, it often gains widespread popularity and usage across various platforms and contexts. This broad appeal can dilute its distinctiveness, making it challenging for consumers to associate the phrase with a specific brand or product.  

The United States Patent and Trademark Office (USPTO) can deny trademark applications based on the “failure to function” doctrine. This doctrine is rooted in Sections 1, 2, and 45 of the Trademark Act (15 U.S.C. §§1051, 1052, 1127), which state that a proposed trademark must function as an identifier of the source of the applicant’s goods or services. If it fails to do so, it cannot be registered as a trademark. 

Overcoming Failure to Function Refusals 

To overcome a failure to function refusal, applicants can take several strategic steps. One approach is to submit a different specimen that clearly demonstrates the mark’s use in identifying the source of goods or services. This might involve showing the mark on product packaging or in a context that highlights its role as a brand identifier. Another strategy is to claim acquired distinctiveness by providing evidence that the mark has become distinctive through extensive use in commerce. This can include sales figures, advertising expenditures, and consumer testimonials that show the mark is recognized as a source identifier. Additionally, applicants can amend their application to the Supplemental Register, which offers limited protection but can still be beneficial. Finally, submitting secondary source evidence can help, such as showing that the mark is recognized by consumers as identifying a secondary source, like a brand or company, even if it is not inherently distinctive. 

Real-World Examples 

Several notable examples illustrate the challenges of trademarking common or popular phrases: 

  1. Apple Logo”: In 1977, Apple’s initial application to register their logo was denied by the USPTO. The office argued that the logo was too generic and lacked distinctiveness. Apple eventually secured the trademark after years of selling products in the American market.
  1. Big Easy“: An application for the term “Big Easy” was rejected because it was considered “primarily geographically descriptive.” The applicant was located in Louisiana, and the term is widely recognized as a nickname for New Orleans.
  1. Taco Tuesday“: As mentioned earlier, LeBron James’ attempt to trademark “Taco Tuesday” for his podcast was denied. The USPTO reasoned that the phrase was too common and widely used to serve as a unique identifier for his podcast.
  1. Best Beer in America” An application for this phrase was denied because it was deemed merely descriptive. The USPTO concluded that the phrase did not distinguish the applicant’s beer from others, as it simply described a characteristic of the product.

Conclusion 

The failure to function doctrine plays a vital role in maintaining the integrity of trademarks. By ensuring that trademarks serve their primary purpose of identifying the source of goods or services, this doctrine helps promote fair competition and protect consumers. Businesses must navigate these requirements carefully to secure and maintain trademark protection. 

While the allure of viral trends is undeniable, the long-term success of a brand hinges on its ability to maintain distinctiveness and resonate with consumers. By understanding the limitations of trademarking popular phrases and focusing on sustainable brand-building strategies, businesses can navigate the complexities of intellectual property and achieve lasting success. 

If you need assistance with trademark issues or have questions about protecting your brand, don’t hesitate to request a call. Off The Mark is here to help you navigate the complexities of trademark law and ensure your brand is well-protected. 

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