Answer
What is a failure-to-function refusal?
Lawyers call this: failure to function · Sections 1, 2 and 45
Short answer
The examining attorney is saying buyers would not read your words or design as a brand at all — they would read them as a message, a decoration, or a piece of information. A trademark has to tell buyers who is behind the product.
Failure to function is a family of refusals, not one refusal, and which one you have decides what you can do about it. A merely informational message may be incapable of registration at all. Ornamentation is different, and can often be fixed.
What changes the answer
- How many other sellers already use it
- In a widely-used-message or informational-matter refusal this is usually the centre of the case: evidence that unrelated sellers put the same words on the same kind of product is what shows buyers read it as a message. In an ornamentation refusal it is one factor among several.
- Where it appears, and how
- Placement is evidence, not a rule. Large or prominent display can look ornamental; discrete, consistent, trademark-style placement supports source-identifying use. The USPTO weighs the overall commercial impression, the practice in your trade, placement, and any evidence of source significance.
- Whether the evidence actually shows a commonplace message
- A phrase in wide circulation can still register if the third-party uses in the record turn out to associate the phrase with you rather than show it used by many unrelated sources.
- What the phrase does
- Wording that tells buyers about the goods, or expresses a familiar sentiment, is doing a job other than naming a source. A stylized font does not change the job.
The rule
The requirement comes from the definition of a trademark in Sections 1, 2 and 45 of the Lanham Act, 15 U.S.C. §§ 1051, 1052 and 1127: a mark identifies and distinguishes goods and indicates their source.
Three recurring versions: widely used messages, read as the sentiment rather than the brand (U.S. Pat. & Trademark Off., Trademark Manual of Examining Procedure § 1202.04 (May 2026) [hereinafter TMEP]); ornamentation, where size, placement and presentation make the matter decoration (TMEP § 1202.03); and informational matter, which tells buyers about the product rather than who makes it.
The routes out differ, and this is the part worth getting right. A merely informational failure-to-function refusal cannot be cured by acquired distinctiveness under Section 2(f) or by amending to the Supplemental Register. Ornamental matter can often be registered anyway — on secondary-source significance, on acquired distinctiveness, or on the Supplemental Register where it is capable of indicating source. See TMEP §§ 1202.03, 1202.04.
What the Board has done
Three decisions in this library, rewritten in plain English from the Board’s opinion.
INVESTING IN AMERICAN JOBS was refused for retail and promotional services because businesses, government and the press all use the phrase to express support for American jobs.
A repeating diamond pattern on electronic hookahs was refused as ornamental, on a record that did not show buyers took the pattern as indicating a source.
100% THAT BITCH was allowed for clothing, on reversal — and the reason is the useful part. Most of the third-party uses the examining attorney had assembled expressly associated the phrase with Lizzo or her music, so the record did not establish a commonplace message incapable of indicating source. Evidence gathered to prove ubiquity turned out to prove association.
The Board found that INVESTING IN AMERICAN JOBS for retail store and promotional services is merely an informational phrase widely used by businesses, government, and media…
Read the plain summary →In re Wal-Mart Stores, Inc. · 2019No later change on its docketThe Board reversed the failure-to-function refusal of 100% THAT BITCH for Lizzo LLC’s shirts, jackets, headwear and other clothing, finding that consumers would perceive the…
Read the plain summary →In re Lizzo LLC · 2023No later change on its docketRegistration refusedThe Board found that a repeating diamond pattern on electronic hookahs is merely ornamental and does not function as a trademark, and Fantasia Distribution’s evidence was…
Read the plain summary →In re Fantasia Distribution, Inc. · 2016No later change on its docketGo deeper
The guide covers all three versions of the refusal and what the corpus shows about how the Board decides them.
What to do next
First work out which version of the refusal you have, because that decides whether Section 2(f) and the Supplemental Register are open to you at all.
Then go through the examining attorney’s third-party examples one at a time. Some will be a different phrase, some will be sellers outside your market, and some — as in the Lizzo appeal — will on inspection tie the phrase back to you.
If you are still choosing how to use the name, placement is evidence you can still create. Consistent trademark-style use has to happen before the specimen does.
An ornamental refusal can sometimes be fixed without a lawyer, by showing the mark used as a brand, on a tag or label, rather than as decoration. Timing rules decide which specimens count, so check them before you file one. A refusal that your phrase is a common message usually cannot be fixed that way, and is worth an attorney’s read before you pay for a response.
If you have this refusal, Valet Law, PLLC can tell you which version it is and whether it is worth answering.
Attorney review is provided by Valet Law, PLLC, a law firm separate from Trademark Valet, LLC. Keep confidential facts out of public tools. Your first message to Valet Law should identify the parties and the general issue only. Wait until Valet Law confirms it can discuss the matter before sending confidential details.
Who checked this
Reviewed and approved by Brandon Leavitt on 2026-10-02.
General information about how trademark law works. It is not legal advice about your situation, and reading it does not make anyone your lawyer.