When Does a Word or Phrase Fail to Function as A Trademark

In the wake of the In re Tam United States Supreme Court decision, there has been a rise of the number of registration refusals from the United States Patent and Trademark Office for failure to function as a trademark. As trademark searchers, this is a concept we need to be aware of when talking with our clients.

The critical question in determining whether a word or phrase functions as a trademark is the commercial impression it makes on the relevant public. In other words, whether the word or phrase sought to be registered would be perceived as a mark identifying the source of the goods or services. When evaluating a word or phrase that appears to be ornamental, rather than functioning as an indicator of source, the size, location, dominance, and significance of the alleged mark as applied to the goods are the relevant factors in determining whether the word or phrase is perceived as an indicator of source.

Recently, the Trademark Trial and Appeal Board decided whether the mark I LOVE YOU functions as a trademark mark for bracelets. The Trademark Office refused registration of Peace Love World Live, LLC’s application on the ground that I LOVE YOU merely conveys the common expression of endearment and fails to function as a trademark. To support its argument, the Trademark Office offered examples of the I LOVE YOU expression used by other jewelry makers in their pieces including bracelets.

In this case, the phrase I LOVE YOU literally was the bracelet itself and the Board found the I LOVE YOU is a common expression of endearment. Therefore, there was no way for consumers to perceive the phrase I LOVE YOU as anything but the expression of endearment and not as an indicator of source. It is not enough that the applicant intends the words or phrase to function as a trademark, the public has to be able to perceive it as an indicator of source.

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