In recent years, the Trademark Trial and Appeal Board has increasingly relied on the so-called “failure to function” doctrine to reject applications to register marks suffering from a number of quite different deficiencies. But all these varied deficiencies are said to prevent the putative marks from identifying the source of the products to which they are affixed, that is to say, from functioning as marks. The doctrine’s flexibility (and perhaps its opaqueness) has caused many scholars (most notably, Alexandra Roberts) to embrace its capacity both to reconfigure what they perceive as unduly generous approaches to trademark registration and to ensure that validity determinations take account of the context in which marks are used.
In Failure to Function and Trademark Law’s Outermost Bound, an excellent law review note, Lucas Daniel Cuatrecasas carefully and critically catalogues the different strands of failure to function case law at the TTAB, demonstrates the inconsistencies in its application by the Board, and offers a creative reform that highlights the under-appreciated multivalence of trademark law. Cuatrecasas’ organization, and careful dissection, of TTAB decisions on the doctrine is invaluable. But the reform proposal that derives from this analysis is even more illuminating.
Cuatrecasas detects more complex normative underpinnings to the failure to function case law than conventional accounts suggest. Because most scholars situate the failure to function inquiry in the Board’s assessment of consumer perception, proposed tweaks of failure to function doctrine typically play with integrating the inquiry into assessments of distinctiveness.
But Cuatrecasas suggests that the TTAB sometimes also engages in competition-based reasoning in its failure to function cases. He argues that the commendable objectives of the failure to function doctrine would be better served by enlisting other more explicitly competition-grounded doctrines of trademark law. In particular, he proposes that that the aesthetic functionality inquiry (presently relevant only to non-word marks) should be extended to all marks. Thus, all marks could be rejected if their registration “would significantly hinder competition in the relevant market.” For example, an applicant would be unable to register the slogan mark “I ♥ DC” on a T-shirt; it would hinder competition in ways that triggered the aesthetic functionality doctrine.
Cuatrecasas recognizes that the distinctiveness inquiry (perhaps aided by inquiries about “use”) already accommodates (or should accommodate) some of what is achieved by the failure to function doctrine. A determination that a term is descriptive will preclude its registration because such a mark will not identify the source of the product on which it is affixed. Thus, it fails to function as a mark for consumers. But we might simply say that, as a result, such a mark lacks distinctiveness.
And assessments of distinctiveness need not be confined to abstract interpretations of the meaning of words. The parallel doctrinal mechanisms for determining inherent distinctiveness of non-word marks make attention to context explicit. One such test, the Seabrook test, asks how a design mark would be understood by consumers in light of the designs already existing in the marketplace and whether the use of the design mark would make a separate commercial impression on consumers in the larger context (such as the overall product packaging) in which the mark appears.
Nothing should stop any of this from happening with assessments of words. This is especially true with use-based applications for registration or in an infringement action where the context of a plaintiff’s use is on the table. Use and distinctiveness have always been intertwined, as can be seen from the definitions that courts offer about “use” (intent to use applications based upon inherent distinctiveness are the biggest challenge, and where Robert’s agenda-setting article was of greatest importance).
Cuatrecasas argues for more explicit assessment of competitiveness concerns in the analysis of a word mark’s validity. A failure to function doctrine that incorporated aesthetic functionality-like considerations might do just that, in a way that Cuatrecasas suggests would be more valuable—and, based on his analysis of TTAB caselaw, as reflective of concerns expressed by the Board.
I might take issue with the deployment of aesthetic functionality as a tool for greater certainty. That particular doctrine is notoriously enigmatic and difficult to apply. But Cuatrecasas’ proposal highlights the important point that trademark validity is not simply an empirical question about consumer association.
Although aspects of the distinctiveness doctrine historically recognized this, and incorporated competitiveness concerns, the Supreme Court’s recent 8-1 decision in Booking.com arguably casts such approaches in doubt. In that climate, for pragmatic reasons, we may need safety-valves that recognize the importance of competitiveness concerns in the judicial assessment of trademark validity. Cuatrecasas’ article intriguingly puts a revised failure to function doctrine in play as a candidate for such a safety-valve.
