Failure to function
A failure to function rejection means that the proposed trademark does not function as a trademark because it fails to identify the source of the goods or services. These types of rejections are common with marks that are either generic or descriptive of the goods or services being offered. In order to be eligible for trademark protection, a mark must be distinctive or unique such that consumers would be capable of identifying the source of the goods or services being offered. For example, if a company tries to register the word “blackberry” for use in selling fruit, the USPTO will reject the application on the grounds that “blackberry” is a generic term for the fruit, and consumers would not recognize it as a specific company’s brand. But if it was used to sell cell phones, then it would most likely be granted a trademark.
Confusingly similar
A confusingly similar rejection is issued when the examiner believes the proposed mark is similar to an existing registered trademark or a pending application. The test for confusing similarity is based on a comparison of the overall appearance, sound, meaning, and commercial impression of the proposed trademark with an existing trademark. This type of rejection does not necessarily mean that the proposed mark is “identical” to an existing mark; but rather it may be that it is phonetically close, or may sound the same as an existing mark. For example, there is a company called “XYZ Sports” and it applies to register a trademark for its sports clothing line, which includes athletic shoes, hats, and shirts. But, there is another company called “XYZ Clothing” that has registered a trademark for hats and shirts. The USPTO will most likely issue a confusingly similar rejection to the proposed trademark “XYZ Sports” because it is too similar to the existing trademark owned by “XYZ Clothing.”
Ornamental
An ornamental trademark rejection simply means that the proposed trademark is considered to be purely ornamental or decorative in nature and does not function as a source identifier for the goods or services being offered under that trademark. Ornamental rejections can also apply to decorative patterns, designs, or phrases that lack any distinct words or logos. For example, a logo or design on a piece of clothing that is only decorative in substance and does not identify the source of the brand will receive an ornamental rejection. Or the phrase “Have a good day” printed on a t-shirt or a mug, may be rejected on the grounds that the phrase is purely ornamental and does not function as a source identifier.
Surname rejection
A surname trademark rejection is typically issued when a proposed mark is primarily a surname or last name. These types of trademarks are not distinctive enough to function as a source identifier for the goods or services being offered. The policy behind such a rejection is to prevent a person from monopolizing a name unless it has acquired secondary meaning or become distinctive in the marketplace. For example, the proposed trademark for “Johnson’s Plumbing” will likely get a surname rejection because “Johnson” is a common surname, and consumers may not associate it with a specific company or brand. On the other hand, the word “Tiffany” is a well-known surname that is now associated with the luxury jewelry company “Tiffany & Co.” Because “Tiffany” acquired secondary meaning through years of marketing and promotion, it was eligible for trademark protection and is now recognized as a strong trademark in the context of jewelry and luxury goods.
