What is a “Functional” Refusal?

A Section 2(e)(5) Functionality refusal is a rejection by the United States Patent and Trademark Office (USPTO) of a trademark application based on functionality. A trademark is considered functional if it describes an inherent feature of a product or service and is essential to its use or purpose. If a trademark is deemed functional, it cannot be trademarked because it would give the owner a monopoly on a feature that others should also be able to use.

A functionality refusal can be based on either aesthetic functionality, where the design is functional and not merely ornamental, or utilitarian functionality, where the feature is essential to the use of the product. A trademark examiner may issue a Section 2(e)(5) Functionality refusal if they determine that the mark is functional and therefore cannot serve as a source identifier.

To overcome a Section 2(e)(5) Functionality refusal, the applicant must provide evidence that the trademark is not functional and that it serves a source-identifying purpose. This may include arguments and evidence showing that the design is ornamental or that the feature is not essential to the use of the product. The applicant may also submit evidence of consumer recognition and secondary meaning, showing that the public associates the trademark with the applicant’s goods or services, rather than the product features.

To overcome a Section 2(e)(5) Functionality refusal, you can take the following steps:

1. Provide evidence that the design, feature, or characteristic is non-functional and serves a source-identifying function.
2. Argue that the design, feature, or characteristic is not essential to the use or purpose of the product or service and does not affect its cost or quality.
3. Provide evidence that consumers have come to associate the design, feature, or characteristic with a particular source of goods or services.
4. Consider submitting alternative designs that are less functional but still serve a source-identifying function.

It is recommended to seek the assistance of a trademark attorney to guide you in overcoming a Section 2(e)(5) Functionality refusal as the process can be complex and challenging.