February 13, 2020,

The Function of a Trademark

Trademarks have been in the news a lot recently. Media personality Kim Kardashian West applied to the U.S. Patent & Trademark Office (USPTO) to register “KIMONO SOLUTIONWARE” as a trademark for her line of shapewear. Rapper Cardi B applied to the USPTO to register “OKURR” as a trademark on clothing. NBA Superstar and businessman LeBron James applied to register the mark “TACO TUESDAY”. All of the trademark applications cited above were refused registration by the USPTO. Why? The USPTO determined that all of these marks, for various reasons, failed to function as trademarks. Read on to find out what the function of a trademark is and why it is so important for registration. What is a Trademark?: A trademark is any word, slogan, symbol, design or combination of these which does two things: 1) identifies the source of goods or services in the marketplace; and 2) distinguishes those goods or services from others. What is the purpose or function of a trademark? The main function or purpose of a trademark is to identify the source of a good or service. If I told you I drove a car to work this morning, you would not know the source or manufacturer of my car (unless you already know what I drive). However, if I told you I drove a CHEVY to work this morning, I have identified CHEVROLET as the source or manufacturer of my car, to the exclusion of all other automobile manufacturers in the marketplace. Further, if I told you I drove a CHEVY TRAILBLAZER to work this morning, I have now identified the source of my car and distinguished my particular type of car from all other types of cars available in the marketplace. This example clearly illustrates how the terms “CHEVROLET” and “TRAILBLAZER” serve their purpose as trademarks or function as trademarks by designating or identifying the particular manufacturer or source of my car and distinguishing the type of car I drive from all other cars in the marketplace. If the USPTO determines that a trademark presented for registration does not meet these two essential requirements, the mark will be refused registration on the basis that it “fails to function as a trademark.”

Failure to function as a trademark due to descriptiveness: In the case of “KIMONO SOLUTIONWARE” the USPTO examining attorney refused to register the mark for several different reasons. However, one basis cited for the refusal was the use of the term “KIMONO” as part of the trademark. According to the USPTO, the term “KIMONO” “immediately informs the purchasers of an aspect of the goods being sold and is therefore descriptive.” In other words, the term “KIMONO” is descriptive and it does not identify the source of the shapewear nor does it distinguish the shapewear from others in the marketplace. Although Ms. Kardashian West claims she was using the term “KIMONO” as a play on her first name “KIM”, the USPTO noted that the common meaning of the term “KIMONO” “is a long, wide-sleeved Japanese robe”. The USPTO attached webpages from various retailers using the word “KIMONO” to describe the type of goods they sell. As a result, the USPTO determined that the term “KIMONO” was “unregistrable” as part of a trademark. “A trademark applicant cannot claim the exclusive right to terms that others may need to use to describe its goods and/or services in the marketplace.” Ms. Kardashian West could have cured this deficiency by disclaiming the term “KIMONO” in her trademark application. However, she chose to expressly abandon her trademark application and change the name of her shapewear line to SKIMS SOLUTIONWARE TM.

Failure to function as a trademark due to use as a commonplace term or message: The USPTO refused to register “OKURRR” and “TACO TUESDAY” as trademarks for several reasons. However, one of the bases for the refusal to register cited on both applications was that “the applied-for mark is a slogan or term that does not function as a trademark or service mark to indicate the source of applicant’s goods and/or services and to identify and distinguish them from others.” According to the USPTO, the terms “OKURRR” and “TACO TUESDAY” are both considered to be “commonplace term[s], message[s], or expression[s] widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.” “Terms and expressions that merely convey an informational message are not registrable.” Therefore, the terms “OKURRR” and “TACO TUESDAY” are unregistrable as trademarks. Neither Cardi B’s nor LeBron’s attorneys have responded to the USPTO’s initial refusal to register their trademarks. As illustrated above, understanding the purpose or function of a trademark is essential to filing a successful trademark application.