Using Failure to Function Doctrine to Protect Free Speech and Competition in Trademark Law
104 Iowa Law Review Online 70, 2020
35 Pages Posted: 5 Mar 2020 Last revised: 18 Apr 2020
Date Written: February 11, 2020
Trademark law’s failure to function doctrine focuses on whether certain words or symbols are used and perceived as a trademark that identifies and distinguishes the source of products in the marketplace. If certain matter fails to function as a mark due to its inherent nature or the manner in which it is used, it cannot be registered or protected under trademark law. A phrase, design, or product feature may be denied registration under failure to function doctrine on the ground it is merely informational or ornamental matter or otherwise fails to function as a mark for this product. Examples include the words I LOVE YOU for jewelry, a swastika symbol for fabrics used to make flags and other textiles, and a peppermint scent and flavor for medicine.
Like trademark law’s requirements that marks be distinctive and non-functional, failure to function doctrine can promote fair competition and freedom of commercial expression. Yet this separate doctrinal tool is rarely used by courts and has only recently been used more frequently at the U.S. Patent and Trademark Office (USPTO). In the past, the USPTO has registered some words or symbols that would likely be classified as “inherently distinctive” on the Abercrombie distinctiveness spectrum, but which are arguably not functioning as trademarks that provide source-identifying product information. Examples include the phrases LIFE IS GOOD and I ♥ NY for T-shirts and other apparel. These words conveyed a non-source-identifying message before the phrases were adopted as marks and arguably fail to function as marks when displayed prominently in large letters on the front of clothing. As such marks have been registered for more than five years, they cannot be cancelled on failure to function grounds. Moreover, if the registrant’s right to use the mark is incontestable, the mark’s validity cannot be challenged in litigation on the ground that it fails to function as a mark.
This paper proposes that Congress add failure to function and lack of distinctiveness as grounds for cancellation of a mark at any time (like generic terms and functional matter) and also revise the Lanham Act to allow accused infringers to raise these defenses in litigation even when a mark becomes incontestable. Congress should also amend the Lanham Act to explicitly permit third party use of another’s mark in a functional, ornamental, or informational manner as a defense to a trademark claim. Courts and decision-makers at the USPTO should always consider whether a phrase, design, or product feature claimed as a mark is actually used and perceived as a trademark, and be more willing to apply failure to function doctrine when the matter does not function as a mark due to its inherent nature or the manner in which it is used. These changes and other reforms of the Lanham Act suggested in this paper will protect expressive values and better promote competition and trademark law’s other goals.
Keywords: Trademark, Failure to Function, Free Speech, Freedom of Expression, Competition, USPTO
JEL Classification: O34
Suggested Citation: Suggested Citation