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Trademark Incapability, Merely Informational, and Failure to Function Refusals: Strategies for Avoiding and Overcoming Trademark Office Actions

Assessing Response Alternatives and Persuading the Examiner

Recording of a 90-minute premium CLE video webinar with Q&A

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Conducted on Thursday, June 10, 2021

Recorded event now available

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This CLE course will guide trademark counsel on strategies for assessing, avoiding, and overcoming trademark incapability, failure to function, and merely informational trademark registration refusals from the USPTO.


Learn on the one hand how “The Best Beer in America” has been found so highly descriptive that it is incapable of serving as a trademark while on the other hand “The Greatest Show on Earth” has been recognized and protected from dilution as famous mark, fully capable of performing as a valid trademark.

Gone are the days when easily obtaining a Supplemental Registration for a merely descriptive mark is a routine occurrence. More and more often, the USPTO is rejecting trademark applications because the applied-for matter is considered incapable of serving as a trademark. So-called merely informational trademark refusals have been on the rise over the last four years at the USPTO.

With merely informational matter, there is no possibility of proving acquired distinctiveness for registration on the Principal Register and in the alternative, there is no possibility of registration on the Supplemental Register. Yet, these trademark incapability rulings are being made without a showing of genericness.

Among the types of subject matter that are targeted in merely informational refusals are widely used or common marketing messages. Indeed, TMEP §1202.04 directs Examining Attorneys to refuse registration when the claimed mark merely conveys general information about the goods or services, or when the claimed mark can be considered a highly laudatory claim of superiority, yet these kinds of refusals sound a lot like subject matter that used to be refused on mere descriptiveness grounds. Only now, when trademark incapability is found with this kind of subject matter, the new challenge is that the rejection cannot be overcome with a showing of acquired distinctiveness, and no amendment to the Supplemental Register is possible. Basically, the outcome is the same as genericness without the rigor and necessary evidence to support genericness.

Listen as our authoritative panel of trademark attorneys examines trademark incapability, failure to function, and merely informational trademark refusals. The panel will discuss strategies for avoiding these kinds of refusals and also will explore opportunities for responding to rejections and overcoming the refusals.



  1. Informational refusals: categories, trends
    1. Matter merely conveys general information or is highly laudatory
    2. Widely used or common messages
    3. Religious matter
  2. Strategies for avoiding refusals
  3. Best practices for responding to and overcoming refusals


The panel will review these and other critical issues:

  • How can trademark counsel position an application to avoid the USPTO issuing failure to function and merely informational refusals?
  • What are the primary considerations for trademark counsel when responding to merely informational and failure to function office actions?
  • What are the areas that have proven to be red flags for the USPTO?
  • What strategies should trademark counsel implement to increase the likelihood of mark registration after the office action is issued?


Baird, Stephen
Stephen R. Baird

Greenberg Traurig

Mr. Baird works with clients to address their most difficult trademark problems. He provides strategic guidance on...  |  Read More

Chambers, Tucker
Tucker A. Chambers


Mr. Chambers works with clients on a variety of intellectual property matters, focusing on trademark issues. He handles...  |  Read More

Holt, Alexandra
Alexandra A. Holt

Greenberg Traurig

Ms. Holt focuses her practice on the clearance, maintenance, and enforcement of intellectual property rights, including...  |  Read More

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