"failure to Function" When That Catchy Slogan You ♥ Is Not a Mark at All

• Jurisdiction: United States,Federal
• Citation: Vol. 46 No. 2
• Publication year: 2021
• topic: Advertising Law,Business of Law,Civil Rights,Trademark,Intellectual Property

"FAILURE TO FUNCTION" When that Catchy Slogan You ♥ is Not a Mark At All

Jane Shay Wald

Irell & Manella LLP

A cultural historian could learn a lot about affinities, preferences, political/social movements, and fads by reviewing a decade-by-decade roster of trademark applications denied by the Patent and Trademark Office for failure to function. Whenever a term or image captures the public's consciousness so that it seems to be everywhere, a quick trip to www.uspto.gov will reveal that one of the places that term shows up is on the PTO database. In multiples.

Some applicants misunderstand trademark law and assume by filing for the latest buzzword in connection with a product or service they'll get a "lock" on the term, imagining fame and royalties. Others, with a somewhat better understanding of the law, try to grab the buzzword for an unusual product—avoiding a "descriptiveness" rejection. Sometimes they use a TM and display the term in a "trademarky" way—on a label, or at the point of purchase on-line. In response to the office action refusing the proposed mark, they make use of the mark for the claimed goods and request to transfer the application to the Supplemental Register, or assert acquired distinctiveness, or come up with more traditional-looking specimens. None of this works to overcome a failure to function refusal.¹

There is a substantial body of case law on the "failure to function" refusal, typically in an ex parte appeal to the Trademark Trial and Appeal Board from the examining attorney's refusal, but sometimes in an inter partes context. Anecdotally, it appears that an increasing number of failure to function refusals are being appealed, and the Board upholds the examining attorney's refusals in almost all of these. Most failure to function refusals are never appealed. Many are filed pro se (in pro per) by unsophisticated filers, and no response to an office action is attempted. Those seeking to monopolize a fad term will likely not persuade an experienced trademark lawyer to waste the client's money in applying for a term on everyone's lips, coffee mugs, and chests.

One timely example can be found in the hundred or so applications (some pending, others dead) to register BLACK LIVES MATTER for a variety of goods and services. While many of these goods and services relate directly to the Black Lives Matter movement, or indirectly through merchandise proclaiming the term, not all of them do. A good example can be found in an application of an individual to register BLACK LIVES MATTER for "casino entertainment services, namely providing electronic gaming machines with and without video input."² To understand the PTO's typical response to such proposed marks, it is helpful to review key portions of an examining attorney's office action for that application³ refusing registration of BLACK LIVES MATTER on the basis of failure to function. This very same office action, or close variants of it, has issued in a great number of applications for political or social affinities, fads, religious quotes or statements, and informational matters. This office action demonstrates the way such marks are examined and perceived. Notice that it's not helpful to the applicant here that his proposed mark is for casino services—services entirely unrelated to the civil rights movement issues associated with the term. Failure to function is different, in this way, from descriptiveness or ornamentality.

Registration is refused because the applied-for mark is a slogan or term that does not function as a trademark or service mark to indicate the source of applicant's goods and/or services and to identify and distinguish them from others. [citations omitted]. In this case, the applied-for mark is an informational social, political, religious, or similar kind of message that merely conveys support of, admiration for, or affiliation with the ideals conveyed by the message.

The office action goes on to emphasize that terms and phrases merely conveying an informational message are not registrable. The office action clarifies that it is the perception of the relevant public that determines whether a term or phrase functions as a mark. "The more commonly a [term or phrase] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].⁴"

The examining attorney attached evidence from numerous web sites and on-line news articles to establish that the phrase BLACK LIVES MATTER "is a commonly used message that conveys support for rallies, protests, or movements dedicated to raising awareness of civil rights and protesting police violence, and conveying the message of support for the same." The examining attorney clarified the significance of the documentation used to establish a failure to function:

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• Wikipedia provides a broad overview of the origination of the phrase, and defines BLACK LIVES MATTER (BLM) as "a decentralized political and social movement advocating for non-violent civil disobedience in protest against incidents of police brutality and all racially motivated violence against black people."
• Britannica defines BLACK LIVES MATTER (BLM) as an "international social movement, formed in the United States in 2013, dedicated to fighting racism and anti-Black violence, especially in the form of police brutality."
• The ACLU blog states "since Black Lives Matter arrived on the scene...the push for Black liberation from state-inflicted violence has evolved into one of the most influential social movements of the post-civil rights era." It further states, "What gets referred to as 'the Black Lives Matter movement' is, in actuality, the collective labor of a wide range of Black liberation organizations, each with their own distinct histories."
• The New York Times reports, "Black Lives Matter May be the Largest Movement in U.S. History."
• Pew Research Center describes "The hashtag #BlackLivesMat-ter" through the lens of "social activism on Twitter" and states that "Organizers of Black Lives Matter made social media—and specifically the hashtag #BlackLivesMatter—a centerpiece of their strategy."
• Screenshots from Etsy, Café Press, and Zazzle show the phrase BLACKLIVESMATTER as a common phrase used as a rallying cry on various types of merchandise such as T-shirts, face-masks, signs, and other accessories and jewelry.

From such evidence, the examining attorney concluded that BLACK LIVES MATTER was not used in a manner calculated to communicate to purchasers or prospective purchasers a single source or origin of the services.

The examining attorney concluded:

Put another way, the public would not perceive the slogan "BLACK LIVES MATTER" as source-identifying matter that identifies applicant alone as the source of the goods/services but rather as an expression of support for anti-violence advocates and civil rights groups. In other words, potential consumers would simply access the publications and enlist or engage in applicant's services because they want to support the cause that the slogan represents, not because they believe the slogan indicates the source of such goods and services.

This refusal, and increasing numbers of such refusals, include an advisory alerting the applicant that amending to the Supplemental Register won't work, asserting a claim of acquired distinctiveness won't work, and submitting a...