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Trademark Registration: Overcoming Failure-to-Function Refusals, Meeting Use and Distinctiveness Requirements

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

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Conducted on Wednesday, April 22, 2020

Recorded event now available

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This CLE course will guide IP counsel on avoiding or overcoming potential roadblocks to trademark registration for failure to function under the Lanham Act. The panel will discuss the use and distinctiveness requirements and how the USPTO and courts have treated the issue. The panel will also provide best practices for overcoming failure-to-function refusals.


Under the Lanham Act, a term that fails to function as a trademark can be refused registration. The mark must identify the source of the goods and distinguish the goods from those manufactured or sold by others to be registered. A failure-to-function refusal is based on a factfinder’s assessment of likely public perception of the mark.

The Board issued several failure-to-function decisions in recent years, though there is no clear test from the courts. Use of the TM symbol often indicates to consumers the intent to use the mark as a trademark; failure to use the symbol may tip the scales against finding a trademark. However, merely using the symbol may not be enough to establish that the matter is used as a mark.

Evaluating use as a mark often goes hand in hand with the distinctiveness analysis. IP counsel must understand the connection between the two requirements and the implications of use as a mark without distinctiveness and distinctiveness without use as a mark.

Listen as our authoritative panel of IP attorneys discusses the purpose of the failure-to-function requirement and its connection to distinctiveness. The panel will examine how the courts and the USPTO have analyzed failure to function. The panel will also address steps to avoid such a refusal and strategies to overcome a failure-to-function rejection.



  1. Failure to function
    1. Requirement
    2. Connection to distinctiveness
  2. USPTO and court treatment
  3. Best practice to avoid a failure-to-function refusal
  4. Overcoming a failure-to-function rejection


The panel will review these and other key issues:

  • What are the critical considerations for trademark counsel when responding to a refusal?
  • What steps can counsel take to avoid having a trademark application rejected by the USPTO because it is does not function as a mark?
  • What strategies should counsel implement to increase the likelihood of mark registration after a refusal?


Englander, Joseph
Joseph R. Englander

Fowler White Burnett

Mr. Englander handles a broad range of intellectual property matters, including the prosecution of U.S. and...  |  Read More

Roberts, Alexandra
Professor Alexandra J. Roberts

Associate Professor
UNH Franklin Pierce School of Law

Prof. Roberts teaches and writes in the areas of trademark and false advertising law, entertainment law, contracts, and...  |  Read More

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