Failure to Function Trademark Refusals After In re Brunetti (2025)

If you’ve tried to register a brand name or slogan and received a USPTO trademark refusal that says your phrase “fails to function” as a trademark, you’re not alone. Over the past few years, USPTO examining attorneys have increasingly used the “failure-to-function” doctrine to refuse trademarks they view as ordinary messages, catchphrases, or ornamentation—especially on clothing and merchandise. In August 2025, the Federal Circuit weighed in again in In re Brunetti, criticizing the USPTO for applying this doctrine without clear, consistent standards and sending the case back for a do-over with reasoned analysis. The takeaway for brand owners is practical: you can still register expressive or widely used terms, but success increasingly depends on how you use the trademark, prove consumer perception, and frame the record in response to an office action.
Federal Circuit Court

What “Failure to Function” Means—in Plain English

A trademark must tell buyers “this comes from you.” When a word, phrase, or image is used in a way that consumers would see as merely informational (e.g., “I LOVE MY DOG”), ornamental (big across the front of a t-shirt), or as a common social message (e.g., “BOSTON STRONG”), the USPTO can refuse registration because the matter doesn’t perform the basic source-identifier job of a trademark. The test turns on consumer perception in the real world—not on whether the applicant sincerely intends the phrase as a brand. Recent TTAB decisions have affirmed trademark refusals for common civic slogans and social messages where the record showed the wording appears widely across unrelated sellers, so consumers would not treat it as a single source.

Why Brunetti (2025) Matters

The Federal Circuit didn’t abolish the doctrine. Instead, it told the USPTO and TTAB to stop treating failure-to-function like an “I-know-it-when-I-see-it” standard. The court vacated the Board’s trademark refusal of the F-word as a trademark for multiple goods and sent the case back because the agency’s reasoning and evidence were not sufficiently explained or consistent with how other widely used words had been treated. The message to examiners: show your work, tie your evidence to how consumers perceive this term for these goods, and explain why a given term is incapable—or at least not functioning as a trademark—based on concrete record evidence. For applicants, that means you now have stronger footing to demand clear standards and to insist on evidence that actually reflects the marketplace for your goods.

A 60-second History On Immoral and Scandalous Trademark Issues

In 2019, the Supreme Court struck down the Lanham Act’s ban on “immoral or scandalous” matter in Iancu v. Brunetti, which allowed registration of FUCT for clothing. After that ruling, the USPTO revisited related trademark applications and—rather than rely on morality bars—turned to failure to function, arguing that certain words (including profanity or common slogans) are so widely used that consumers don’t see them as brands. In 2025, the Federal Circuit didn’t say the F-word must be registered; it said the Board hadn’t adequately justified its trademark refusal under the failure-to-function framework and needed to apply a rational, consistent standard supported by the record. The court also flagged the growing number of such refusals and stressed the need for guidance that applicants and examiners can both follow.

How USPTO Examiners Build (and How You Can Rebut) a Failure to Function Case

Examiners typically assemble screenshots showing the phrase used by many sellers on similar goods (shirts, hats, mugs), social-media uses, and articles that describe the phrase as a common message. They may say the wording is “commonly used” or “informational,” and point to the placement (e.g., front-chest printing) to call it ornamental. After Brunetti, however, the agency must do more than hand-wave. It should connect the dots between the goods you listed, how your specimens present the trademark, and how buyers in your trade channel encounter the phrase. In other words, if the government claims your wording is commonplace, it should show where, by whom, and at what scale consumers see it—so we can fairly test whether people would treat your use as branding.

A Strong Rebuttal Focuses on Two Things: Use and Perception.

• Use as a trademark. We show that you present the term like a brand—on neck labels, hangtags, headers, packaging, and product pages where shoppers expect to see a brand name—not just as decoration on the front of a shirt. If you offer clothing, consistent use on a hangtag or inside label is especially helpful. Where feasible, we also show the term next to a ®/™ symbol and in proximity to SKU, size, and price—the places buyers recognize as brand signals.
• Consumer perception. We marshal evidence that ordinary purchasers connect this term to you. That can include distributor and retailer listings that treat the term as a brand, press that calls out your products under that name, customer reviews referring to the brand, and (for advanced cases) a short survey demonstrating brand association.
• The Federal Circuit’s decision strengthens both lines of attack: it invites applicants to challenge “commonplace” assertions that are thin, contradictory, or divorced from how the mark is actually used on the goods in the application.

What Counts as Good Evidence Now

• Specimens and packaging that signal brand use. If you’re in apparel, favor hangtags, woven neck labels, packaging stickers, and product page headers that show the mark near the size/color/price information. For hard goods, show the mark on the box, on the product, and on the product page title (not just in a billboard-style image).
• Marketplace exposure beyond your own site. Listings at reputable retailers (even regional chains), catalogs, distributor pages, and trade-show materials all help. If resellers organize their pages around your term as a brand, that’s powerful.
• Press and reviews that treat the term as a brand. A local write-up saying “Acme’s XYZ™ backpack” does more than a social post that just quotes the phrase.
• Competitor coexistence (and why it matters). If the phrase is widely used by many sellers purely as decoration, that hurts. But if you can show other sellers treat your term as your brand (and that sellers who use the phrase as decoration are a different universe), you can turn the “commonplace” argument aside.
• Surveys (sometimes). Short, well-designed “Teflon” or “Ever-Ready” style surveys can show that relevant consumers recognize the wording as a brand for your goods. Surveys aren’t required, but for close or high-value applications, they can be the difference between “not functioning” and “functions as a mark.”

Real-World Examples (and One Hypothetical)

Example 1: The civic slogan. A volleyball club seeks to register BOSTON STRONG for entertainment services and events. The TTAB affirms refusal because the phrase is a well-known social message used by many sources; fans would view it as a rallying cry, not a single provider’s brand. The record shows widespread, unrelated use across apparel and events after the Marathon bombing, supporting the conclusion that consumers treat it as a message. This is the classic failure-to-function fact pattern: common slogan first, brand second (if at all).

Example 2: The expressive clothing phrase. A t-shirt company wants to register BE KIND for shirts. The USPTO cites dozens of sellers using BE KIND across apparel; the applicant’s specimens show big front-chest printing and no brand use on tags or packaging. That likely fails. But if the company consistently uses BE KIND as a neck-label brand, on hangtags, and on product pages where buyers expect brand info—and it shows secondary use of the phrase as a small graphic—its chances improve. The issue isn’t the morality or niceness of the message; it’s whether buyers see this use as a brand for these goods.

Example 3: The edgy term after Brunetti. Suppose a designer files for a profane word on sunglasses and backpacks. The USPTO submits screenshots of hundreds of third-party uses across novelty tees and stickers, but very little in the specific categories of eyewear and bags. The applicant shows consistent brand-style use in packaging, reseller listings for sunglasses that treat the term as the brand, and press coverage identifying the line as a brand. After Brunetti, the question is not “is the word common everywhere?” but “how do buyers of these goods perceive this use?” The more the record shows genuine brand signaling in the category, the stronger the applicant’s case becomes.

How Your Goods Identification and Specimens Can Make or Break the Outcome

The USPTO examines the trademark “as used on or in connection with the goods or services identified.” That means the identification you choose—and the specimens you submit—frame the failure to function discussion. Two practical rules:

• Narrow your ID to the marketplace you can prove. If your brand truly exists for “athleisure hoodies sold via specialty fitness retailers,” say that. A broad ID (“tops”) invites screenshots from mass-market sellers using the phrase as decoration. A tailored ID helps align the record with the consumer context in which your mark does function.
• Lead with brand-style specimens. For apparel, include labels/hangtags and an ecommerce product page that reads like a brand listing, not a graphic tee. For other goods, include the box, the product, and retail pages with the mark where brand data lives (title, attributes), not only in hero art.

How to Respond to a Failure to Function Office Action in 2025

Here’s a practical structure we use (and you can expect us to adapt for your facts):

1) Demand clarity (politely). Cite In re Brunetti (2025) and explain that the trademark refusal must rest on a defined standard with record-supported reasons showing how consumers of these goods would perceive the matter as informational/ornamental rather than source-identifying. Ask the examiner to tie each piece of evidence to your specific goods and channels, and to explain any differences from how other widely used words have been treated.

2) Reframe the specimens. Walk through your labeling, packaging, and page layout to show brand-style use. If needed, amend the application to add substitute specimens (if in use on or before the filing date) or convert to TEAS Standard and re-file with cleaner use at the right time.

3) Put in better marketplace proof. Submit dated, source-linked screenshots from credible retailers or distributors showing your brand used as a brand, not decoration. If “commonplace” screenshots in the trademark refusal are from unrelated product categories or novelty sellers, distinguish them and show that buyers in your category experience your trademark differently.

4) Consider 2(f) (acquired distinctiveness) where warranted. If you have evidence of sales, distribution, press, and consumer recognition over time, 2(f) can be a backup path. Keep in mind: 2(f) concedes that the matter was not inherently distinctive, so we usually start by pressing function and only reach 2(f) if needed.

5) Use comparisons wisely. Point out trademark registrations for widely used words that function as brands (e.g., LOVE for certain goods) and invite the examiner to explain why your use is materially different. This is not a “gotcha”; it’s an APA-style request for consistency in government decision-making post-Brunetti.

6) Preserve the appeal posture. If the trademark refusal persists, you’ll want a record that a reviewing tribunal can treat as substantial evidence. That means: keep exhibits clean, dated, and tied to specific assertions; avoid dumping dozens of unannotated screenshots; and clearly link each exhibit to consumer perception for the goods at issue.

What Business Owners Can Do Before Filing

You can avoid most failure-to-function problems with small adjustments up front:

Decide if the phrase is your brand or your message. If it’s a message you want to print big on products, also pick a separate brand (house mark) you can place on labels and packaging. Then file that brand for trademark registration.

• Design specimens early. For apparel, create labels, hangtags, and product pages that include your mark in brand-signaling positions. For other goods, invest in consistent packaging where the mark appears like a logo, not just decorative text.
• Gather third-party proof as you grow. Save screenshots of retailer pages, distributor catalogs, and press coverage showing your mark as a brand. Organize them by date and channel. Those receipts become persuasive exhibits if an office action arrives.
• Be realistic about expressive terms. If the core of your brand is a ubiquitous social message or common phrase, expect a tougher road. That doesn’t mean “don’t try”—it means pair the phrase with a distinctive brand name or distinctive stylization, and plan to build a record on use and perception.

A Quick Word on Stylization and Designs

Stylization can help—but only if it changes how consumers perceive the matter. A plain phrase in a common font splashed across the front of a shirt usually won’t cut it. A distinctive, consistent logo applied in brand-style contexts (labels, tags, packaging) has more traction. Just remember: even a great logo can “fail to function” if it’s used only as ornamentation.

What if You Previously Lost on “Immoral/Scandalous”?

Brunetti (2019) opened the door for trademarks previously barred on morality grounds. But the question now is not “is it offensive?”—it’s “will buyers treat it as a brand for these goods in this market?” If your phrase is edgy or profane, your use and evidence matter even more. After Brunetti (2025), the USPTO must justify a failure to function trademark refusal with record-based reasoning tailored to your goods and channels; you, in turn, should present a specimen and evidence set that shows brand signaling and buyer perception—not just intention.

Bottom line for 2025

Failure-to-function isn’t going away, but Brunetti requires clearer, evidence-based reasoning from the USPTO and gives applicants better footing to challenge vague “commonplace” assertions. Use and perception win cases. Labels, tags, packaging, retailer pages, and press that treat your term as a brand are your best friends. Design for the register. Build brand-style specimens before you file, and curate third-party proof as you sell. Ask for consistency. If similar widely used words have been registered for similar goods, point that out and ask the examiner to explain the difference.

Plan your strategy. Where appropriate, combine brand-style use with 2(f) evidence (acquired distinctiveness), comparisons to similar trademark registrations, or a refined identification to match the marketplace you can prove.

How Our Law Firm Can Help

Our trademark team handles all types of trademark refusals regularly. We start with a candid assessment: is your use truly brand-style for the goods in your ID? If not, we help fix specimens and product pages so they send the right brand signals. We then build an evidence record that reflects what buyers actually see, and we frame the response so it meets the Federal Circuit’s call for reasoned, consistent decision-making. If you’ve received a failure to function office action—or you want to avoid one—we’re happy to review your label, packaging, and online product pages and give actionable next steps.