On July 26, 2021, Kristen Ruisi was quoted in Managing Intellectual Property on overcoming trademark rejections at the U.S. Patent and Trademark Office (USPTO).
As of mid-June, the USPTO has seen a 63% increase in applications, 211,000 more than were received at the same time in 2020. The surge means more applications for prospective trademark owners to worry about and longer wait times at the USPTO. The last thing applicants want in this time of turmoil is a trademark rejection, which further complicates the process, especially if brand owners can’t get around it. According to the article, one of the more difficult refusals to overcome is that of failure to function, in which the office determines that prospective brands do not function as trademarks.
Ruisi says she recently received her first failure to function rejection in her 18 years of practicing trademark law. As part of the refusal, the USPTO said her application wouldn't be examined because of the applied-for mark’s failure to function.
The application involved both a word and a design that the client used together in commerce. But the examiner thought the word mark and the graphic were separate features and that the client was trying to get two marks through in one application.
Ruisi says she refiled the application with just the word mark and applied for just the design element without the word mark. She says there is a possibility that the office may not accept the specimens of use because the mark doesn’t match the drawing. But if that happens, she says, she will be able to respond by pointing out that the applicant initially applied for the mark as whole.