Failure to Function: When a Mark is Merely Ornamental

Trademarks are words, symbols, designs, or combinations of these elements that identify and distinguish the source of goods or services of one party from those of others. Trademarks are valuable assets that help consumers recognize and trust the quality and reputation of a brand. However, not all trademarks are eligible for registration or protection under the law. One of the grounds for refusal or cancellation of a trademark is that it fails to function as a trademark.

a bird standing on a metal bird in the rain

Trademarks are words, symbols, designs, or combinations of these elements that identify and distinguish the source of goods or services of one party from those of others. Trademarks are valuable assets that help consumers recognize and trust the quality and reputation of a brand. However, not all trademarks are eligible for registration or protection under the law. One of the grounds for refusal or cancellation of a trademark is that it fails to function as a trademark.

What is Failure to Function?

Failure to function is a type of trademark refusal that occurs when a proposed mark does not meet the definition of a trademark. Failure to function can also occur when a proposed mark does not create a commercial impression separate from the underlying product or service, or when consumers are not likely to perceive the mark as a source identifier.

Failure to function can be based on various factors, such as:

  • The nature of the mark itself;

  • The manner in which the mark is used;

  • The context in which the mark appears;

  • The relevant industry practices;

  • The evidence of consumer perception.

Failure to function can apply to both word marks and design marks, as well as to both goods and services.

What is Ornamentation?

Ornamentation is one of the factors that can cause failure to function. Ornamentation refers to the use of a mark as a mere decorative feature on the goods or their packaging, rather than as a trademark to indicate the source of the goods. For example, a slogan prominently displayed on the front of a t-shirt may be considered merely ornamental use and not trademark use. That is, most purchasers of the t-shirts would not automatically think the slogan identified the source of the goods but would view the slogan only as a decoration on the goods.

Ornamentation can also apply to design marks that are common shapes or patterns that do not convey any distinctive meaning or message. For example, a star design on a pair of shoes may be considered merely ornamental use and not trademark use. That is, most purchasers of the shoes would not associate the star design with any particular brand or source but would view it only as an aesthetic element on the shoes.

Ornamentation can also apply to marks that are used in such a way that they lose their significance as trademarks. For example, a logo that is repeated all over a product or its packaging may be considered merely ornamental use and not trademark use. That is, most purchasers of the product would not perceive the logo as an indicator of source but would view it only as part of the overall design of the product or its packaging.

How is Ornamentation Determined?

Ornamentation is determined by examining the totality of the evidence in the record, including the specimens of use, third-party registrations and uses, dictionary definitions, internet searches, consumer surveys, and any other relevant information. The burden is on the applicant to show that the proposed mark functions as a trademark.

Ornamentation can be raised under section 2(e)(1) of the Trademark Act, which prohibits registration of marks that are merely descriptive or deceptively misdescriptive of the goods or services. However, if the applicant can show that the mark has acquired distinctiveness through extensive use and recognition by consumers, it may overcome this refusal.

Ornamentation can also be raised under section 45 of the Trademark Act, which defines what constitutes use in commerce for trademark purposes. For example, a mark that is not affixed to the goods or their containers or displays in a manner that associates it with the goods would not be considered use in commerce under this section. Similarly, a mark that is not used in connection with advertising or rendering services to others would not be considered use in commerce under this section.

Why is Ornamentation Important?

Ornamentation is important because it ensures that only marks that serve the purpose of trademarks are registered and protected by law. Trademarks are meant to identify and distinguish the source of goods or services and to prevent consumer confusion and deception. Trademarks are not meant to monopolize generic terms, descriptive terms, functional features, personal names, geographic terms, or other matter that does not indicate source.

Ornamentation also preserves the public domain and promotes fair competition. By preventing registration of marks that do not function as trademarks, ornamentation allows others to use such matter freely and legitimately in their trade or business. Ornamentation also prevents trademark owners from gaining undue advantage or exclusivity over matter that is not distinctive or source identifying.

Conclusion

Ornamentation is one of the legal challenges that trademark applicants and owners may face when seeking to register or protect their marks. Ornamentation can result in the refusal or cancellation of a trademark registration and expose the owner to liability for infringement or dilution. Please reach out if you have additional questions about trademarks or if you need assistance with your own.