Failure to Function: A Potential New Shield Against Trademark Infringement?

By Alyssa Yoshino

from Volume 13 (2023-2024)

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The United States Patent and Trademark Office (“USPTO”) has recently been characterized as having a “penchant” for refusing trademark registrations on the grounds of failure to function. This trend has come with commentary, both praising the doctrine’s ability to efficiently supplement the distinctiveness analysis by assessing use and criticizing the inconsistent application of the doctrine. The sources of this academic commentary, from Alexandra J. Roberts and Lucas D. Cuatrecasas, serve as the heads of two camps regarding the failure to function doctrine. The first encourages an increased application of the doctrine as a combined distinctiveness and use analysis. The second encourages the application of the doctrine separately from distinctiveness.

This article serves two purposes: (1) to explore how alleged trademark infringers may use and interpret the existing failure to function doctrine to defend themselves and (2) to propose a framework for the failure to function doctrine that both makes sense of existing guidance and seeks to further a policy objective. Part I provides a brief overview of the statutory basis of the failure to function doctrine. Part II explores the merits and shortcomings of the current failure to function doctrine. Part III examines how a defendant may raise the existing failure to function doctrine to ultimately argue no trademark infringement. Part III expands on how three existing doctrines can be used to argue that a mark fails to function. Part IV proposes a middle ground between the Roberts and Cuatrecasas camps in which the failure to function doctrine, as currently defined by the USPTO, can be applied to trademark litigation. This middle ground takes a hybrid empirical-normative approach that considers policy in light of existing USPTO guidance and caselaw.