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USPTO Issues Guide For Failure-to-Function Refusal

When applying for trademark/service mark registration with the U.S. Patent and Trademark Office (USPTO), an examining attorney reviews the application to determine whether it complies with applicable statutes and rules. If there are any substantive, technical, or procedural deficiencies, the examining attorney will likely issue an Office Action letter explaining any of these refusals.  One of these refusals can be based on the proposed mark failing to function as a trademark because the proposed mark merely communicates information about the goods/services, uses widely used commonplace, social, political, or religious messages, or directly quotes passages or citations from religious texts. Some examples include: “I DC” for clothing items; “ONCE A MARINE, ALWAYS A MARINE” for various clothing items; “BRAND NAMES FOR LESS” for retail store services; and “PROUDLY MADE IN THE USA” for electric shavers.  

The U.S. Patent and Trademark Office (USPTO) recently issued a guide for aiding in the determination of whether a proposed mark functions as mark.  The guide creates categories for types of matter that may be considered merely informational, discusses when an examining attorney must refuse registration or require a disclaimer, provides applicant response options, and illustrates case law examples. For example, under applicant response options, should the applicant receive this type of refusal, the applicant must show that the public perception of the proposed mark is that of a source indicator.  Evidence of the applicant’s use as a mark or exclusive use in the relevant marketplace for the goods/services under the mark can be supportive towards overcoming this refusal.

Firm Partners Named Best Lawyers in America in 2017

Firm Partners Named Best Lawyers in America in 2017

 

Jennie S. Malloy  and John Cyril Malloy III  were recognized in the 2017 Edition of The Best Lawyers in America, selected by their peers, for Intellectual Property Litigation and other areas in the firm’s exclusive field of law. Both attorneys have been recognized by Best Lawyers since 2006. 

Firm Partner, John Cyril Malloy III, named to Board of Directors of Baptist Health Foundation and to the Doctors Hospital – Miami Orthopedic and Sports Medicine Institute Council

Firm Partner, John Cyril Malloy III, has been named to the board of directors of Baptist Health Foundation and to the Doctors Hospital – Miami Orthopedic and Sports Medicine Institute Council. The Firm is proud to support Baptist Health’s delivery of cutting-edge, non-profit healthcare, including uncompensated and reduced-cost care, to all of our friends and neighbors in the South Florida community.

 https://baptisthealth.net/en/about-baptist-health/pages/charitable-care.aspx