Trademark Failure to Function

By Roberts, Alexandra J. | Iowa Law Review, May 2019 | Go to article overview

Trademark Failure to Function


Roberts, Alexandra J., Iowa Law Review


I. Introduction

In 2006, a company called ChaCha Search launched a new smartphone app that provided search engine access via text message. Users were invited to text queries to the number "242242," the numeric equivalent of typing "ChaCha" on their phones' keyboards, and await results. After the service went live, ChaCha applied to register "242242" as a service mark. The U.S. Patent & Trademark Office ("USPTO") reviewed the company's specimen of use-a screenshot from the Beta version of the app (shown below)-and granted registration.1

Less than two years later, ChaCha found itself embroiled in a dispute with competitor Grape Technology (Grape). Grape sought to cancel ChaCha's registration on the basis that "242242" lacked distinctiveness.2

Distinctiveness is the primary protectability hurdle for most trademarks, so it was a logical basis for Grape to select in challenging ChaCha's registration. The USPTO and courts assess the inherent distinctiveness of a text mark by considering the mark in relation to the goods or services with which it's used3 and then placing it in one of five categories: the mark is classified as fanciful, arbitrary, suggestive, descriptive, or generic.4 If the term or phrase is neither descriptive nor generic, and is not barred by any of the other restrictions enumerated in the Lanham Act,5 it typically receives protection from its earliest use in interstate commerce.6 Trademark law presumes consumers will perceive it as a mark.

In response to Grape's challenge, the Trademark Trial and Appeal Board ("TTAB") reassessed the mark's distinctiveness and let ChaCha's registration stand. The Board concluded that "242242" was not merely descriptive for the services in question because the number "d[id] not identify an ingredient, quality, characteristic, function, feature, purpose, or use of the specified services."7

But there's another argument that the Board declined to consider.8 Under the Lanham Act and common law, matter used in commerce is only protectable if it is both distinctive and used as a mark. 9 Its success as a mark depends upon how it is used not just semantically, but aesthetically. While courts pay little attention to the latter requirement, and the USPTO applies it somewhat inconsistently, use as a mark plays a crucial role-along with distinctiveness-in predicting whether or not the public will perceive matter as indicating source. To be protectable, a trademark must be not only used in commerce,10 but used in a trademark way:11 It must appear where consumers expect a trademark to appear, and it must be sufficiently set off from the surrounding text and images to attract notice.12 If it isn't, it will fail to function as a trademark to consumers, and thus shouldn't merit protection under federal trademark law.13 This Article explains why use as a mark is crucial to trademark protection and advocates for combining use as a mark analyses with distinctiveness assessments to better serve the goals of trademark law and avoid outcomes in which matter that fails to function-like 242242-is nonetheless granted trademark protection.

Without use as a mark, there can be no trademark, and consequently no trademark rights.14 Yet, distinctiveness has received the lion's share of attention, generating rules and tests applied in thousands of cases and USPTO decisions and discussed in hundreds of articles, books, and practice guides.15 A term's inherent qualities are often treated as the sole predictor of whether consumers will understand it as a mark. At the same time, the USPTO and federal courts have struggled to articulate and apply a clear standard for use as a mark and endeavored to separate it from distinctiveness. When a mark does not actually indicate source or distinguish goods or services because of the way in which it is used, the USPTO refuses to register it based on its "failure to function."16 Use as a mark and distinctiveness are two sides of the same coin. …

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