There are many things to consider when trying to determine if you have a protectable trademark, including:

• How distinctive is the word, phrase, or logo that you wish to use?
• Does it point to your business or brand as the source of the good or service the mark represents?
• Is the mark being used in commerce?

But one question most people fail to consider is whether the mark is being used as a trademark.
In IP law, a mark can be denied by the United States Patent and Trademark Office (USPTO) for a “Failure to Function.” In other words, consumers do not perceive the phrase, logo, or word as a trademark in the way it’s being used. This occurs when a mark fails to communicate the source of a product or service in any of several ways. This could be because the mark is a widely used or commonplace expression (i.e. “Good day”), or the mark could be considered merely ornamental (i.e. displayed on an article of clothing as part of the aesthetic rather than as the brand label)..
Recently, Lori Allen of “Say Yes to The Dress,” was denied a trademark for the phrase, “SAY YES TO WHAT’S NEXT” on Failure to Function grounds. The examining attorney felt the phrase was merely informational and widely used, and therefore would not be understood by the general public as a source indicator since “the applied-for mark is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment”.
Ms. Allen later appealed the decision to the Trademark Trial and Appeal Board (“TTAB”) (In re Lori Allen Enterprises, LLC, Application No. 88546889 (T.T.A.B. February 12, 2021). The appeals overturned the decision, as they did not agree with the examining attorney’s argument that the phrase was commonly used enough that it would fail to function as a trademark. As such, her trademark for the phrase “SAY YES TO WHAT’S NEXT” was granted.
Many other brands have not been so lucky. Take for example, Mayweather Promotions LLC’s recent attempt to trademark the phrase “Past, Present and Future” for t-shirts. Their bid to secure the mark was denied by both the USPTO and the TTAB for Failure to Function. The USPTO examining attorney and appeals board both believed that the public would perceive “Past, Present, and Future” as a “commonplace phrase” rather than a source indicator.  (See: In re Mayweather Promotions, LLC, Application No. 86753084 (T.T.A.B. October 29, 2020).)
Feeling Confused?
 That’s okay! Evaluating whether your desired trademark actually functions like a trademark can be tricky and difficult to decern. As you can see from the cases above, even attorneys can disagree on the merits of a “Failure to Function” claim. If your trademark is denied for this very reason, you’ll want to get help from an experienced attorney when determining if you should appeal or stop pursuing your desired mark.  If you have any questions, we are here to help.  Contact us by calling (888) 666-0062 to schedule an appointment with one of our IP attorneys.
 
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.