Here & Now: Trademarks and the “Failure to Function” Doctrine

September 1, 2020

Trademark law can be confusing when it comes to determining whether a particular word, phrase, or design may be registered as a trademark.  Almost every week seems to bring another story about an aspiring entrepreneur attempting to register the latest pop culture phrase, meme, or political slogan, usually in the hope of cornering the market for selling merchandise bearing the proposed mark.  From COVFEFE to OK BOOMER to BLACK LIVES MATTER, the U.S. Patent and Trademark Office (USPTO) receives an initial wave of applications that, months later, usually results in an equal wave of registration refusals.  The reason is that in most cases, the word or phrase is not being used in a manner that actually functions as a trademark.

As one court explained many years ago, “[t]he Trademark Act is not an act to register mere words, but rather to register trademarks.”  A trademark or service mark is a word, name, symbol, and/or device that identifies and distinguishes one source of goods or services in the marketplace from another.  The trademark registration system helps prevent consumers from being confused about the source and quality of the goods or services that they are considering purchasing.  Without those particular goods or services, there is no trademark to protect.  For this reason, as the USPTO’s Trademark Trial and Appeal Board has explained, “[t]he more commonly a 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.”

To be eligible for federal trademark registration, a proposed mark must be distinctive—either inherently or as acquired through extensive commercial use.  But even if it is distinctive, the proposed mark also must be used and understood by the consuming public to indicate a particular source of goods or services.  In other words, the USPTO will reject attempts to register even inherently distinctive terms when they fail to function as trademarks.  This “Failure to Function” doctrine is an important tool for ensuring that only properly used terms receive the benefits of registration with the USPTO.

Perhaps even more important from a public policy perspective, the “Failure to Function” doctrine also preserves and enhances free speech rights.  When a proposed mark consists of a broad, popular political slogan such as BLACK LIVES MATTER or #METOO, the general public will more likely associate that slogan with the movement in question rather than with a specific manufacturer of the shirts, buttons, or banners on which it is printed.  To allow any one individual or company—whether scrupulous or not—to register the slogan and prevent anyone else from using it runs contrary to important First Amendment principles.  To modify a popular sports aphorism, in such cases the slogan on the front of the shirt is more important than the name on the tag.

Yet even the First Amendment interest is not absolute, as trademark law is ultimately about balancing interests.  When an applicant can demonstrate that a particular word or phrase does indicate a particular source of goods or services, it may succeed in registering it as a trademark, no matter how popular or well-known that word or phrase may be.  For example, the presidential campaign of Donald J. Trump was able to register the phrase MAKE AMERICA GREAT AGAIN as a mark for, among other things, bumper stickers, T-shirts, and online social networking services.  That effort succeeded where others have failed (e.g., efforts to register slogans like BLACK LIVES MATTER) because the Trump campaign demonstrated that consumers associated MAKE AMERICA GREAT AGAIN with the campaign and with Mr. Trump in particular as the source of those bumper stickers, T-shirts, and social networking.  Black Lives Matter, by contrast, is a broad social and political movement that does not call to mind any one particular source of goods or services that might be sold under that phrase.

Other types of potential marks, such as the names of businesses, engender similar questions about trademark usage.  The key takeaway for now, however, is that the answer to the question, “Can I ‘trademark’ that?” usually comes down to whether the applicant intends to use the word or phrase in a manner that functions as a trademark, as opposed to merely an attempt to monopolize the name of the latest trend or movement.

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