Is It a Mark Or Not? Strategies for Overcoming Refusals Based on Genericness, Ornamentation and Functionality

While most trademark practitioners are prepared to handle an initial refusal to register a mark from the U.S. Patent and Trademark Office (“PTO”) based on likelihood of confusion or descriptiveness grounds, many are considerably less comfortable responding to refusals in which the PTO challenges whether a particular mark even qualifies for trademark status. Such refusals are often based on genericness, ornamentation, or functionality grounds. Strategies for overcoming such refusals are discussed in detail below.

Genericness

Trademarks or service marks that are deemed to be generic terms are not registerable on the Principal or Supplemental Registers. Whether a particular mark is generic can in most cases be ascertained based on answers to the following questions: 1) What is the class of goods or services associated with the mark; and 2) Does the relevant public understand the mark to refer primarily to that class of goods or services rather than to a specific brand?

To answer these questions, applicants as well as PTO examiners consider a variety of evidence. For example, the applicant's use of its mark in a generic manner in the description of goods or services or in the submitted specimens of use has in some cases been held to be dispositive of its genericness. Use of a particular mark by competitors in a generic, as opposed to a brand, sense may be probative of genericness when the competitors use the mark to refer to goods or services similar to those of the applicant. Lexis-Nexis^' searches of media references evidencing generic use of the mark, as well as dictionary definitions are also relevant. A linguist's testimony regarding references to a particular mark in news articles and other publicly available sources may also lend support to the genericness, or lack of genericness, of a particular mark; a properly conducted consumer survey may do so as well.

It is important to recognize the possibility of a genericness refusal early on and to take steps to establish that the mark at issue does in fact have brand significance. For example, when introducing a new mark that may not already have an established generic term associated with it and used for the product or service in common English parlance, mark owners should make sure that such a term is created. This will help minimize the relevant consuming public using the mark generically in the absence of any other alternative. If consumers are already using the mark in a generic sense, the mark owner should consider corrective advertising to redirect this trend. Mark owners should also consider using the generic term immediately beside or beneath the mark to encourage consumers to make the distinction between the two, perhaps even including the term “brand.” Examples of this kind of use include JELL-O^' brand gelatin; BAND-AID^' brand adhesive bandages; or KLEENEX^' brand tissue. Mark owners should diligently police the use of their marks to make sure they do not enter into common parlance, into dictionaries (particularly industry dictionaries), and into media references as generic terms.

Ornamentation

Marks consisting of pictures, designs, or symbols may be refused registration on the grounds that the relevant consuming public is likely to perceive them as “merely ornamental” rather than as marks. If, on the other hand, a mark is considered to be both ornamental and an indicator of source, the mark may be protectable. Provided that an objection to the registration of a mark on the basis of mere ornamentation can be overcome, registration on the Principal Register is available.

There is a wide variety of evidence available to applicants to help establish that a particular mark is not “merely ornamental.” Sometimes practices in the trade itself can assist in determining whether a particular design is typically construed as merely decorative or as a source-identifier. Evidence of efforts by the applicant to advertise and to promote the brand significance of the design has also been recognized to demonstrate trademark use. In some cases, examples of prior registrations (or of pending use-based applications) that incorporate the design element for other goods and services may be taken into consideration in determining the brand significance of the decorative or quasi-decorative feature. Finally, properly conducted consumer surveys have been given weight in assessing the brand significance of designs.

Mark owners who recognize the potential of receiving a refusal of registration of their marks based on “mere ornamentation” can take steps early on to improve the likelihood of successfully obtaining a federal registration. Filing an intent to use application for a mark that incorporates an arguably decorative element and making a conscious effort to develop use of the mark as an indicator of source may help to stave off an ornamental objection once use is made of the mark and evidence of use is submitted to the PTO. Use of “look for” advertising can help bolster a case for the consumer association of the design element with the product line (eg, “It's the one in the rainbow-striped box”). Trademark owners should generally avoid common geometric shapes, as using decorative elements comprised of these shapes will put a greater burden on the owners to establish brand significance. Likewise, trademark owners should avoid design elements that have merely descriptive connotations in connection with the underlying product (eg, use of the image of a chef and salad bowl on a salad dressing label).

Functionality

Marks consisting of features that are necessary to the use or purpose of the underlying product, or that affect its cost or quality, may be deemed to be unregisterable because they are merely functional attributes of the product. Functionality can be utilitarian (ie, linked to the performance of the product) or aesthetic (ie, linked to certain qualities which make the product more palatable or attractive and that provide certain competitive advantages). Most often a functionality refusal results from an applicant's attempt to register a particular product shape, such as the shape of a cigarette lighter or a pharmaceutical bottle cap. Marks deemed to be functional are precluded from registration on either the Principal or Supplemental Registers and are incapable of acquiring secondary meaning under Section 2(f) of the Trademark Act.

In ascertaining whether an applicant's mark is functional, the PTO assesses whether the features of the mark, in effect, render the resulting product so superior in utilitarian design that the features need to be made available to all competitors, rather than restricted to a single owner through trademark registration. Among the factors routinely considered by the PTO in ascertaining functionality are: the existence of a utility patent for the feature, the utilitarian nature of the feature as described in the applicant's literature, the existence of alternative designs available to competitors, and the cost of manufacturing the product incorporating the feature. For example, evidence showing that the feature in fact is more expensive to manufacture than would be the case without it can be probative of a lack of functionality, the theory being that competitors would not necessarily be constrained by protection of a design feature that made a product more expensive to manufacture. The existence of a design patent for the feature at issue will help to support registrability, because of the protection of ornamental and other non-functional features that design patents afford. Evidence of product sales and of the extent of advertising campaigns specifically directed to touting the brand-significance of the feature may help support arguments of its use as a trademark, as may declarations from individuals in the trade.

To improve the likelihood of obtaining a federal registration for a mark which may face the risk of being deemed functional, trademark owners should be discouraged from praising or commenting on the functional features of the product in promotional literature and encouraged instead to emphasize the non-functional aspects. Trademark practitioners wishing to support the owner's efforts in this regard should evaluate the existence of alternative designs or features used by, or available to, the competition. In addition, the relative costs of manufacturing both the feature at issue as well as all other alternative designs that may provide a different but equivalent performance or aesthetic advantage to the trademark owner's competitors should be assessed carefully before embarking on a program to protect a specific design feature or configuration as a trademark. Protection under design patent law should also be evaluated to see if it provides more comprehensive protection.

Conclusion

In sum, when considering protection for certain trademark designations or product features that may run the risk of refusal in the PTO on the basis of genericness, ornamentation or functionality, it is imperative that mark owners make early and concerted efforts to imbue the mark or designation with brand significance by encouraging the relevant consuming public to consider the source identifying function of the mark, design, or product feature. Building up a level of brand recognition in such a mark or designation can be time consuming and costly but, if successful, can significantly enhance the value of the mark or designation to the benefit of its owner and can greatly increase the likelihood of obtaining a federal registration.

Christopher P. Bussert is a partner specializing in intellectual property law in the Atlanta office of Kilpatrick Stockton LLP. He can be reached at 404-815-6545 or [email protected]. Christine P. James is an associate in the intellectual property section of Kilpatrick Stockton LLP. She can be reached at 404-815-6166 or [email protected].

While most trademark practitioners are prepared to handle an initial refusal to register a mark from the U.S. Patent and Trademark Office (“PTO”) based on likelihood of confusion or descriptiveness grounds, many are considerably less comfortable responding to refusals in which the PTO challenges whether a particular mark even qualifies for trademark status. Such refusals are often based on genericness, ornamentation, or functionality grounds. Strategies for overcoming such refusals are discussed in detail below.

Genericness

Trademarks or service marks that are deemed to be generic terms are not registerable on the Principal or Supplemental Registers. Whether a particular mark is generic can in most cases be ascertained based on answers to the following questions: 1) What is the class of goods or services associated with the mark; and 2) Does the relevant public understand the mark to refer primarily to that class of goods or services rather than to a specific brand?

To answer these questions, applicants as well as PTO examiners consider a variety of evidence. For example, the applicant's use of its mark in a generic manner in the description of goods or services or in the submitted specimens of use has in some cases been held to be dispositive of its genericness. Use of a particular mark by competitors in a generic, as opposed to a brand, sense may be probative of genericness when the competitors use the mark to refer to goods or services similar to those of the applicant. Lexis-Nexis^' searches of media references evidencing generic use of the mark, as well as dictionary definitions are also relevant. A linguist's testimony regarding references to a particular mark in news articles and other publicly available sources may also lend support to the genericness, or lack of genericness, of a particular mark; a properly conducted consumer survey may do so as well.

It is important to recognize the possibility of a genericness refusal early on and to take steps to establish that the mark at issue does in fact have brand significance. For example, when introducing a new mark that may not already have an established generic term associated with it and used for the product or service in common English parlance, mark owners should make sure that such a term is created. This will help minimize the relevant consuming public using the mark generically in the absence of any other alternative. If consumers are already using the mark in a generic sense, the mark owner should consider corrective advertising to redirect this trend. Mark owners should also consider using the generic term immediately beside or beneath the mark to encourage consumers to make the distinction between the two, perhaps even including the term “brand.” Examples of this kind of use include JELL-O^' brand gelatin; BAND-AID^' brand adhesive bandages; or KLEENEX^' brand tissue. Mark owners should diligently police the use of their marks to make sure they do not enter into common parlance, into dictionaries (particularly industry dictionaries), and into media references as generic terms.

Ornamentation

Marks consisting of pictures, designs, or symbols may be refused registration on the grounds that the relevant consuming public is likely to perceive them as “merely ornamental” rather than as marks. If, on the other hand, a mark is considered to be both ornamental and an indicator of source, the mark may be protectable. Provided that an objection to the registration of a mark on the basis of mere ornamentation can be overcome, registration on the Principal Register is available.

There is a wide variety of evidence available to applicants to help establish that a particular mark is not “merely ornamental.” Sometimes practices in the trade itself can assist in determining whether a particular design is typically construed as merely decorative or as a source-identifier. Evidence of efforts by the applicant to advertise and to promote the brand significance of the design has also been recognized to demonstrate trademark use. In some cases, examples of prior registrations (or of pending use-based applications) that incorporate the design element for other goods and services may be taken into consideration in determining the brand significance of the decorative or quasi-decorative feature. Finally, properly conducted consumer surveys have been given weight in assessing the brand significance of designs.

Mark owners who recognize the potential of receiving a refusal of registration of their marks based on “mere ornamentation” can take steps early on to improve the likelihood of successfully obtaining a federal registration. Filing an intent to use application for a mark that incorporates an arguably decorative element and making a conscious effort to develop use of the mark as an indicator of source may help to stave off an ornamental objection once use is made of the mark and evidence of use is submitted to the PTO. Use of “look for” advertising can help bolster a case for the consumer association of the design element with the product line (eg, “It's the one in the rainbow-striped box”). Trademark owners should generally avoid common geometric shapes, as using decorative elements comprised of these shapes will put a greater burden on the owners to establish brand significance. Likewise, trademark owners should avoid design elements that have merely descriptive connotations in connection with the underlying product (eg, use of the image of a chef and salad bowl on a salad dressing label).

Functionality

Marks consisting of features that are necessary to the use or purpose of the underlying product, or that affect its cost or quality, may be deemed to be unregisterable because they are merely functional attributes of the product. Functionality can be utilitarian (ie, linked to the performance of the product) or aesthetic (ie, linked to certain qualities which make the product more palatable or attractive and that provide certain competitive advantages). Most often a functionality refusal results from an applicant's attempt to register a particular product shape, such as the shape of a cigarette lighter or a pharmaceutical bottle cap. Marks deemed to be functional are precluded from registration on either the Principal or Supplemental Registers and are incapable of acquiring secondary meaning under Section 2(f) of the Trademark Act.

In ascertaining whether an applicant's mark is functional, the PTO assesses whether the features of the mark, in effect, render the resulting product so superior in utilitarian design that the features need to be made available to all competitors, rather than restricted to a single owner through trademark registration. Among the factors routinely considered by the PTO in ascertaining functionality are: the existence of a utility patent for the feature, the utilitarian nature of the feature as described in the applicant's literature, the existence of alternative designs available to competitors, and the cost of manufacturing the product incorporating the feature. For example, evidence showing that the feature in fact is more expensive to manufacture than would be the case without it can be probative of a lack of functionality, the theory being that competitors would not necessarily be constrained by protection of a design feature that made a product more expensive to manufacture. The existence of a design patent for the feature at issue will help to support registrability, because of the protection of ornamental and other non-functional features that design patents afford. Evidence of product sales and of the extent of advertising campaigns specifically directed to touting the brand-significance of the feature may help support arguments of its use as a trademark, as may declarations from individuals in the trade.

To improve the likelihood of obtaining a federal registration for a mark which may face the risk of being deemed functional, trademark owners should be discouraged from praising or commenting on the functional features of the product in promotional literature and encouraged instead to emphasize the non-functional aspects. Trademark practitioners wishing to support the owner's efforts in this regard should evaluate the existence of alternative designs or features used by, or available to, the competition. In addition, the relative costs of manufacturing both the feature at issue as well as all other alternative designs that may provide a different but equivalent performance or aesthetic advantage to the trademark owner's competitors should be assessed carefully before embarking on a program to protect a specific design feature or configuration as a trademark. Protection under design patent law should also be evaluated to see if it provides more comprehensive protection.

Conclusion

In sum, when considering protection for certain trademark designations or product features that may run the risk of refusal in the PTO on the basis of genericness, ornamentation or functionality, it is imperative that mark owners make early and concerted efforts to imbue the mark or designation with brand significance by encouraging the relevant consuming public to consider the source identifying function of the mark, design, or product feature. Building up a level of brand recognition in such a mark or designation can be time consuming and costly but, if successful, can significantly enhance the value of the mark or designation to the benefit of its owner and can greatly increase the likelihood of obtaining a federal registration.

Christopher P. Bussert is a partner specializing in intellectual property law in the Atlanta office of Kilpatrick Stockton LLP. He can be reached at 404-815-6545 or [email protected]. Christine P. James is an associate in the intellectual property section of Kilpatrick Stockton LLP. She can be reached at 404-815-6166 or [email protected].