Failure to Function and Ornamental Refusals: Why Slogans, Hashtags, and Merchandise Designs Get Rejected

Summary. This article explains why the USPTO refuses to register slogans, hashtags, catchphrases, and designs printed on merchandise, even when nobody else owns them, and why the refusal turns on how consumers perceive the matter rather than on whether it is original. It traces the failure-to-function doctrine from the statutory definition of a trademark in Section 45 through the TMEP categories for ornamental matter, informational matter, widely used messages, and hashtags, and it tells the stories of the leading decisions, from the polka dots of In re Swift and the BLACKER THE COLLEGE slogan to I ♥ DC, EVERYBODY VS RACISM, .SUCKS, and the Federal Circuit's 2025 remand in In re Brunetti. It covers the constitutional backdrop after Matal v. Tam, Iancu v. Brunetti, and Vidal v. Elster, and the role the same question plays in oppositions, cancellations, and infringement suits. Open questions are identified, including the missing standard for widely used words, the weight of print-on-demand evidence, and the limits of the Supplemental Register and Section 2(f) for messages. Practical implications for brand owners, merchandise sellers, and challengers, an extended worked example involving a small apparel brand, common mistakes, an FAQ, and takeaways close the article.

Dana Okafor runs a two-person screen-printing shop in Chattanooga called Juniper & Salt. Three summers ago she drew a shirt for a river-cleanup festival: the words GOOD WATER DAYS in tall, hand-lettered capitals across the chest, with a small paddle underneath. It sold out in a weekend. By October it was the best-selling item on her website, and by December she found eleven near-identical shirts on print-on-demand marketplaces, one of them using her photograph. A friend told her to "trademark the phrase," so she filed a use-based application in Class 25 and uploaded the best picture she had: the front of the shirt, laid flat on a wooden table.

Four months later the examining attorney's letter arrived. Registration was refused because the applied-for mark "is a decorative or ornamental feature of the goods" and "does not function as a trademark to indicate the source of applicant's clothing." Dana's reaction was the one almost every small brand owner has: but I invented it. Nobody else said GOOD WATER DAYS before I did. How can it fail to be my trademark?

The answer is that originality has nothing to do with it. Trademark law does not reward the person who coined a phrase. It protects symbols that tell buyers who stands behind a product. A phrase printed across the front of a shirt may be original, catchy, and commercially valuable, and still tell the buyer nothing about where the shirt came from. The buyer is purchasing the message, not relying on it to identify a maker. That gap between the value of a design and its function as a brand is where failure-to-function and ornamental refusals live, and it is one of the most common reasons merchandise, slogan, and hashtag applications stall at the USPTO.

The short answer

• A trademark is defined by what it does. Under 15 U.S.C. § 1127, a trademark is a word, name, symbol, or device used "to identify and distinguish" one person's goods from others' "and to indicate the source of the goods." Matter that does not do that job is not a trademark, however distinctive it looks.
• The USPTO enforces that definition through "failure to function" refusals. The statutory hooks are Sections 1, 2, 3, and 45 of the Lanham Act, 15 U.S.C. §§ 1051, 1052, 1053, and 1127. The Federal Circuit confirmed in In re Vox Populi Registry Ltd., 25 F.4th 1348 (Fed. Cir. 2022), that the source-identifier requirement is "broader than just whether a proposed mark is generic or descriptive."
• There are several families of refusal. Ornamental matter (designs and words that decorate the goods), informational matter (statements that tell the buyer something), widely used messages (slogans and sentiments the public already uses), hashtags that are merely tags, titles of single creative works, and matter that consumers see as something other than a brand, such as a top-level domain.
• Consumer perception is the whole test, and it is a question of fact. The examining attorney looks at the specimen, the way the matter appears on the goods, the practices of the trade, and evidence of how others use the same words. The Federal Circuit reviews the Board's answer for substantial evidence, which makes appeals hard to win, as the applicant learned in In re GO & Associates, LLC, 90 F.4th 1354 (Fed. Cir. 2024).
• Ornamental refusals are often curable; widely used message refusals usually are not. An ornamental design can register by showing it identifies a secondary source, by proving acquired distinctiveness under 15 U.S.C. § 1052(f), by moving to the Supplemental Register under 15 U.S.C. § 1091, or simply by showing use on a hang tag or label. A message the public uses to express a common sentiment is treated as incapable of identifying anyone, on either register.
• The Federal Circuit has told the Board to explain itself. In In re Brunetti (Fed. Cir. Aug. 26, 2025), the court vacated the refusal of FUCK for jewelry, bags, and retail services because the Board had not articulated why some commonplace words can serve as marks and others cannot.
• The question follows the mark into litigation. Failure to function is a ground for opposition and cancellation, and the "use as a mark" question decides whether the Rogers test and the descriptive fair use defense are available in an infringement case after Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023).

What "function" means: the statute and the Supreme Court

The Lanham Act does not register words. It registers trademarks, and it defines a trademark by its job. Section 45 says the term "includes any word, name, symbol, or device, or any combination thereof" used or intended to be used "to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." The service mark definition in the same section tracks it for services. Section 1 lets the "owner of a trademark" apply; Section 2 bars refusal of a mark "by which the goods of the applicant may be distinguished from the goods of others" except on listed grounds; Section 3 does the same for service marks. Read together, these provisions make source identification a precondition of registration, not just one factor. The Court of Customs and Patent Appeals put it in a sentence that examining attorneys still quote: the Trademark Act "is not an act to register words but to register trademarks," In re Standard Oil Co., 275 F.2d 945 (C.C.P.A. 1960).

The Supreme Court has said the same thing many times, usually in cases about something else. In Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), the Court held that a color (the green-gold of a dry-cleaning press pad) can be a trademark, but only once it acquires secondary meaning, because "it is the source-distinguishing ability of a mark" that lets it serve trademark law's purposes. In Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000), the Court held that product design can never be inherently distinctive, reasoning that consumers know that "almost invariably, even the most unusual of product designs" is intended "not to identify the source, but to render the product itself more useful or more appealing." That observation is the intellectual core of the ornamental refusal: decoration is presumed to be there because people like it, not because it tells them who made the thing.

In Jack Daniel's, the Court gave the most quotable modern version: "a trademark is not a trademark unless it identifies a product's source (this is a Nike) and distinguishes that source from others (not any other sneaker brand)." The Federal Circuit has since built both of its recent failure-to-function decisions on that sentence. And in USPTO v. Booking.com B.V., 591 U.S. 549 (2020), the Court made consumer perception the governing question for genericness, rejecting a per se rule in favor of evidence about what the term means to the relevant public. The failure-to-function cases borrow that framing: the issue is not what the applicant intends the matter to do, but what buyers actually take it to mean.

Two consequences follow from tying registrability to function. First, intent does not matter. An applicant can sincerely want a slogan to be a brand, put a ™ next to it, and spend money promoting it, and still fail if the public reads the words as a message. The Board said so in In re Pro-Line Corp., 28 USPQ2d 1141 (TTAB 1993), and the Federal Circuit affirmed the same reasoning in Vox Populi, where the Board had found that the applicant's advertising showed its "intention to present" .SUCKS as a mark, but "this does not mean that consumers will perceive it as such." Second, the question is specific to the goods and the manner of use. The same words can be a mark on a hang tag and an ornament on the chest of a shirt, a brand for one product and a message for another.

The family of refusals

The Trademark Manual of Examining Procedure (TMEP) organizes failure-to-function refusals in section 1202 and its subsections. The TMEP is USPTO guidance, not law, but examining attorneys follow it, the Board cites it, and the Federal Circuit has quoted it with approval. The main categories that matter for slogans, merchandise, and social media are these.

The refusals overlap. A slogan printed huge across a shirt can be both ornamental and a widely used message; the examining attorney will usually issue both, and the response must answer both. A hashtag can also be ornamental, informational, or descriptive. Before arguing anything, the applicant must work out which refusal is really driving the case, because the cures are different and some of them are not available at all for one category. That diagnosis is the first step in Overcoming a Failure-to-Function or Ornamental Refusal: A Practical Guide, and the response tasks are laid out item by item in the Failure-to-Function Refusal Response Checklist: A Practical Checklist.

Failure to function is also related to, but distinct from, descriptiveness. A descriptive term under Section 2(e)(1) describes the goods and can register on the Principal Register once it acquires distinctiveness. A widely used message does not describe the goods at all; it is simply something people say, and the USPTO treats it as unable to acquire distinctiveness because it will never point to one source. The Federal Circuit has called the two inquiries "complementary and opposite sides of the same coin" for descriptive matter, while insisting the source requirement reaches further. The descriptiveness spectrum itself is explained in Genericness, Genericide, and Acquired Distinctiveness: Where Trademark Protection Begins and Ends.

Ornamental matter: when decoration is the product

The old cases: polka dots, whitewalls, and the Seabrook questions

The ornamental doctrine is older than the Lanham Act's modern case law, and the early cases still frame the analysis. In In re Swift & Co., 223 F.2d 950 (C.C.P.A. 1955), the applicant wanted to register a band of polka dots on the label of its household cleanser cans. The examiner called the dots mere background ornamentation. The court reversed, holding that although polka dots are a common decorative device, the band as used on the applicant's goods made a distinctive impression and its primary significance was as a source indicator. The court admitted the line between a merely ornamental design and a distinctive mark that also happens to be ornamental can be close, and the cases since then have lived on that line.

The tire cases show the other side. In In re General Tire & Rubber Co., 404 F.2d 1396 (C.C.P.A. 1969), the applicant sought to register three narrow white concentric rings on the sidewall of a tire. The court affirmed the refusal: whitewalls were a familiar form of tire ornamentation, and three thin rings were a refinement of that familiar ornament rather than a brand. Buyers who saw them would think "whitewall," not "General Tire."

The test that later courts use for whether a design is inherently distinctive came from a frozen-food case. Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342 (C.C.P.A. 1977), asked whether a design is a common basic shape or design, whether it is unique or unusual in the particular field, whether it is a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods, and whether it is capable of creating a commercial impression distinct from the accompanying words. The Seabrook questions are still the vocabulary of ornamental refusals and of trade dress distinctiveness generally. An applicant who can show its design is unusual in its field, not a variation on what everyone else does, has an inherent-distinctiveness argument; one whose design is a version of a common decorative motif does not.

Size, placement, and the "small, neat, and discrete" principle

Most modern ornamental refusals involve clothing, and most of those turn on where and how large the matter appears. The TMEP, in § 1202.03(a), states the principle that has guided examination for decades: a small, neat, and discrete word or design on the breast pocket of a shirt may create the commercial impression of a trademark, while a larger rendition of the same matter emblazoned across the front of a garment may be perceived as decoration. Buyers have learned where brands go: on the neck label, the hang tag, the breast, the hip pocket, the waistband. What is printed in large letters across the chest is usually what the shirt is about.

The Board's leading slogan case illustrates the point. In In re Pro-Line Corp., the applicant sought to register BLACKER THE COLLEGE SWEETER THE KNOWLEDGE for shirts. The specimen showed the slogan printed prominently across the front. The Board affirmed the refusal, finding that buyers would read the phrase as a slogan carrying a message, devoid of trademark significance, rather than as an indicator of the shirt's source, and that the applicant's intent that it function as a mark did not change how the public would see it.

The principle is not a rule of geometry, however. In In re Lululemon Athletica Canada Inc., 105 USPQ2d 1684 (TTAB 2013), the Board expressly declined to adopt a per se rule about size, acknowledging that fashion has changed and that many brands now print their logos large across garments. Lululemon still lost: the Board found that its mark, a single line in a wave design applied to the front of hooded sweatshirts and jackets, would be seen as a simple decorative element rather than a brand. The lesson is that size and placement are evidence, not the test. A famous logo printed large still reads as a brand. An unfamiliar design printed small may still read as decoration if it looks like trim, piping, or a common motif.

The same reasoning extends beyond clothing. Designs covering the surface of a product, repeating patterns, and decorative motifs on tableware, jewelry, phone cases, and home goods all draw ornamental refusals. In In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987), the Board affirmed the refusal of a floral vine pattern for dinnerware, noting the trade's long practice of decorating tableware with floral designs. In In re Fantasia Distribution, Inc., 120 USPQ2d 1137 (TTAB 2016), a repeating diamond pattern on electronic hookahs was refused as ornamental.

When ornamental matter is also a mark

The doctrine does not say decorative matter can never be a trademark. It says matter that is merely ornamental cannot. Three routes take an ornamental design past the refusal.

Secondary source. Matter that would otherwise be ornamental can function as a mark if consumers recognize it as identifying a source of other goods or services, so that its appearance on the shirt tells them the shirt is sponsored or licensed by that source. A university's seal on a sweatshirt, a band's logo on a tour shirt, a racetrack's checkered-flag emblem on a patch: in each case the buyer reads the design as "official merchandise from X." TMEP § 1202.03(c) describes this route, and the Board's older cases, such as In re Paramount Pictures Corp., 213 USPQ 1111 (TTAB 1982), where MORK & MINDY on decals was held to identify the television series as a secondary source, show it in action. The secondary source must be real and the applicant must prove it: the source's own trademark use on other goods or services, and the public's familiarity with it.

Acquired distinctiveness. An ornamental design that has been used long enough and promoted heavily enough as a brand can register under Section 2(f). The evidence is the same kind used for descriptive terms: length and exclusivity of use, advertising expenditures, "look for" advertising that directs attention to the design as a brand, unsolicited media coverage, and survey or declaration evidence. The pink color of Owens-Corning insulation, registered after the company showed decades of advertising tying the color to its brand, In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985), is the classic example of a feature that began as aesthetic and became a mark. The evidence file for that showing is covered in Proving Acquired Distinctiveness and Defeating a Genericness Challenge: A Practical Guide.

A different specimen. The fastest cure is often not legal argument at all. If the applicant also uses the matter on a neck label, a woven tag, a hang tag, or packaging, a specimen showing that use may present the mark the way buyers expect brands to appear. Substitute specimens are governed by the rules in 37 C.F.R. Part 2, notably § 2.56 on what a specimen must show and § 2.59 on substitutes, which must have been in use before the application filing date (or before the end of the period for a statement of use). The specimen rules are explained in the Trademark Specimen Preparation Checklist: A Practical Checklist.

A design that does none of these things can still go to the Supplemental Register if it is "capable of distinguishing" the applicant's goods. That register gives no presumption of validity or exclusive right, 15 U.S.C. § 1094, but it lets the owner use the ® symbol under 15 U.S.C. § 1111, puts the mark in the USPTO's database where examining attorneys will cite it against later confusingly similar applications, and can support foreign filings. The trade-offs are discussed in Common-Law Rights, the Supplemental Register, and the Principal Register: A Practical Guide.

Informational matter and widely used messages: when the words are the message

Informational statements

The second family of refusals reaches words that tell buyers something. A retailer's slogan WHY PAY MORE!, an automaker's DRIVE SAFELY, a manufacturer's PROUDLY MADE IN USA, a construction company's WATCH THAT CHILD painted on its trucks: the Board refused each of these over the years because buyers would take them as information, advice, or encouragement rather than as a name for the seller. The examples come from In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984), In re Volvo Cars of North America, Inc., 46 USPQ2d 1455 (TTAB 1998), In re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987), and In re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1984). The common thread is that each statement says something a buyer would expect many businesses to say. When everyone in a trade could plausibly use the same words, those words cannot point to one of them.

The Board's frequently cited formulation comes from In re Eagle Crest, Inc., 96 USPQ2d 1227 (TTAB 2010), in which the applicant sought to register ONCE A MARINE, ALWAYS A MARINE for clothing. The Board found the phrase was an old and familiar Marine Corps motto, that the public would see it on clothing as an expression of support for or affiliation with the Marines, and that "slogans and other terms that are considered to be merely informational in nature" are not registrable. The analysis looks at "the applicant's specimens and other evidence of record showing how the designation is actually used in the marketplace," a sentence the Federal Circuit later quoted in Vox Populi.

Widely used messages

The more contested category, and the one that produces most of the recent law, is the widely used message. TMEP § 1202.04(b) describes it: slogans, terms, and phrases used by various sources to convey ordinary, familiar, well-recognized concepts or sentiments, including social, political, religious, patriotic, or similar messages, and common expressions of affection or encouragement. Matter of this kind, the TMEP says, will be understood as conveying its ordinary meaning, not as a trademark for anyone. The refusal is not limited to political slogans. It reaches I LOVE YOU on jewelry, a city's tourism enthusiasm on souvenirs, a patriotic song title on candles, and a profanity on phone cases.

Four stories show how the category works.

I ♥ DC. In D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710 (TTAB 2016), the dispute was between two souvenir businesses. Jonathan Chien owned a Supplemental Register registration for a stylized I ♥ DC mark covering bags, apparel, and plush toys, and had a pending application for the same mark on the Principal Register for shirts and caps. D.C. One, a wholesaler that sold I ♥ DC merchandise, opposed the application and petitioned to cancel the registration on the ground that the phrase could not function as a mark. The record showed T-shirts, sweatshirts, caps, onesies, mugs, and other goods bearing a prominent I ♥ DC available from many sources. The Board found the phrase, modeled on the I ♥ NY campaign, had acquired "a significance as an expression of enthusiasm" for Washington and would be "perceived as informational." It sustained the opposition and cancelled the registration. The case matters for three reasons. It shows a competitor using failure to function offensively. It shows that a Supplemental Register registration is not safe, because matter that cannot function is not "capable of distinguishing" either, and a Supplemental registration carries no presumption of validity under 15 U.S.C. § 1057(b). And the record was built from the marketplace: shop displays, other vendors' goods, and the way the phrase actually appeared on merchandise.

I LOVE YOU. In In re Peace Love World Live, LLC, 127 USPQ2d 1400 (TTAB 2018), the applicant sought to register I LOVE YOU for bracelets, on which the words appeared as the decorative feature of the jewelry. The Board affirmed the refusal, finding that the words were a common term of endearment and that third-party jewelry bearing the same words showed buyers were accustomed to seeing them as decoration and sentiment. Peace Love is often cited for a point that matters to every merchandise seller: evidence of other merchants selling goods with the same words is evidence of how the public perceives them.

EVERYBODY VS RACISM. GO & Associates filed in June 2020 to register EVERYBODY VS RACISM for tote bags, apparel, and awareness-promotion services. The examining attorney found the phrase used by NBA referees on warm-up shirts, in rap songs, podcasts, sermons, and YouTube videos, and on many sellers' clothing. GO argued that those were ornamental third-party uses that did not count, and offered search-engine data suggesting the phrase was rarely searched before GO began using it. The Board affirmed the refusal, and the Federal Circuit affirmed in In re GO & Associates, holding that substantial evidence supported the finding that the public would see the phrase as an anti-racism message. The court also rejected GO's argument that informational matter refusals are unconstitutional content discrimination. Its reasoning is the most useful sentence in the modern case law: nothing in the Lanham Act "prohibits registration of a mark containing informational matter, so long as the mark also functions to identify a single commercial source." The court pointed to JUST DO IT, A DIAMOND IS FOREVER, CAN YOU HEAR ME NOW?, and MAKE AMERICA GREAT AGAIN as slogans that convey a message and identify a source at the same time. The difference is the evidence of how the public encounters them.

GOD BLESS THE USA and TEXAS LOVE. The Board has applied the same reasoning to marks with famous origins. In In re Lee Greenwood, 2020 USPQ2d 11439 (TTAB 2020), the singer whose 1984 song popularized the phrase sought to register GOD BLESS THE USA for accent pillows, decorative wood centerpieces, and wall hangings. The Board held the phrase was a widely used patriotic sentiment that failed to function, notwithstanding the song's fame. Greenwood also tried, late in the appeal, to amend the mark to THE LEE GREENWOOD COLLECTION GOD BLESS THE USA, adding a house mark he already owned. The Board agreed with the examining attorney that the amendment would materially alter the mark and was impermissible under 37 C.F.R. § 2.72. In In re Texas With Love, LLC, 2020 USPQ2d 11290 (TTAB 2020), TEXAS LOVE for hats and shirts was refused on a record showing many sellers using the phrase to express affection for the state. Fame as the author of a phrase, these decisions suggest, is not the same as fame as the source of goods, and adding a brand to a message after the fact is usually not allowed in the same application.

Why widely used messages cannot be cured by use

The practical consequence of a widely used message refusal is severe. The TMEP takes the position that matter of this kind is not registrable on the Principal Register even under Section 2(f), and is not registrable on the Supplemental Register, because it is not "capable of distinguishing" any one seller's goods. Evidence of the applicant's own sales and advertising rarely moves the needle, because the problem is not that the public has not yet learned the phrase belongs to the applicant. It is that the public uses the phrase itself.

The Federal Circuit's closest analog is In re Boston Beer Co., 198 F.3d 1370 (Fed. Cir. 1999), where the brewer sought to register THE BEST BEER IN AMERICA. The court affirmed the refusal, finding the phrase so highly laudatory and descriptive that it was incapable of acquiring distinctiveness, notwithstanding substantial advertising, and noting that other brewers used similar claims. The same logic underlies the widely used message category: some phrases are so much a part of ordinary speech that granting one seller exclusive rights would take them away from everyone else.

There is a narrow exception in the case law. If the record shows the public associates the phrase with the applicant specifically, the Board will register it even though others also use it. In GO & Associates, the Federal Circuit noted that GO did not argue any of the dozens of third-party uses were trademark uses attributable to GO, and it cited a Board decision finding that a phrase, as used on the specimens, "would be associated with Applicant" even though "it may also be used by third parties." The opening exists, but the applicant must walk through it with evidence, not argument.

Hashtags, domains, and other modern variants

Social media created a new version of the old problem. Many applicants now file hashtags, assuming the # symbol makes a phrase look like a brand. TMEP § 1202.18 takes the opposite view: the hash symbol generally adds no source-identifying significance, and a hashtag is registrable only if the matter, with or without the #, would be perceived as a mark for the goods or services. A hashtag that merely tags a topic, invites people to join a conversation, or combines a symbol with otherwise unregistrable wording fails to function.

The Board's leading example is In re DePorter, 129 USPQ2d 1298 (TTAB 2019). The applicant sought to register #MAGICNUMBER108 for shirts. The Chicago Cubs had gone 108 years without a World Series title before winning in 2016, and the Board found that the hashtag was used widely by fans as a social media reference to that drought and the championship; on shirts, it would be read as a fan's message, not as a brand. The case illustrates two points: a hashtag is not a shortcut around the widely used message doctrine, and the evidence in these cases often comes straight from public social media posts.

The Federal Circuit's Vox Populi decision dealt with a different modern variant. Vox Populi operates the .SUCKS top-level domain and sought to register .SUCKS, in standard characters and in a pixelated stylized form, for domain registry services. The Board found consumers would see .SUCKS only as one of many generic top-level domains, a part of a domain name rather than an indicator of who provides registry services. Vox's own website described .SUCKS domains as products ("life.sucks and divorce.sucks"), and registrars and press used the term the same way. The court affirmed, holding that advertising and sales figures are "not by themselves dispositive of how consumers perceive a mark," and that the stylized lettering did not create a commercial impression separate from the words. The stylization point is a recurring one: a special font can carry an otherwise unregistrable word into registrability only if the design creates "an impression on the purchasers separate and apart from the impression made by the words themselves," a standard taken from In re Cordua Restaurants, Inc., 823 F.3d 594 (Fed. Cir. 2016).

Other variants follow the same logic. A list of 570 words arranged in a column failed to function in In re Light, 662 F. App'x 929 (Fed. Cir. 2016) (nonprecedential), because the public could not perceive it as a single mark. The title of a single book or film is treated as describing the work, not as identifying its publisher. A performer's name used only to identify who performs on a recording does not identify a source of the recording until it is used across a series or otherwise controlled as a brand. These categories are less relevant to merchandise, but they share the same structure: matter that the public reads as something other than a brand is not a brand.

Brunetti's second trip to the Federal Circuit

Erik Brunetti is the only person to have taken two trademark fights about profanity to a federal appellate court and changed the law both times. The first fight ended in Iancu v. Brunetti, 588 U.S. 388 (2019), where the Supreme Court held that the Lanham Act's bar on "immoral" and "scandalous" marks violated the First Amendment, and Brunetti's FUCT mark was later registered. After that decision, the USPTO reexamined Brunetti's separate applications to register the word FUCK itself for sunglasses, phone cases, jewelry, bags, and retail store services, and refused them on a new ground: the word is "a commonplace term, message, or expression widely used by a variety of sources." The Board affirmed in a precedential 2022 decision, finding the word "arguably one of the most expressive words in the English language" and pointing to many unrelated sellers using it prominently on the same kinds of goods.

In In re Brunetti, No. 2023-1539 (Fed. Cir. Aug. 26, 2025), the Federal Circuit vacated and remanded. The majority, in an opinion by Judge Dyk, rejected most of Brunetti's arguments: the refusal was not viewpoint discrimination, it was not retaliation for his Supreme Court win, and Iancu v. Brunetti did not decide the case because a bar on scandalous words and a failure-to-function refusal are different questions. The court also reaffirmed the doctrine's statutory footing and agreed that the Board properly considered third-party use of the word on the same goods. But it held that the Board had not articulated a standard. The Board said commonality "is not the test," that some words are "inherently incapable" of functioning, and that an applicant could rebut a prima facie case with "competent evidence," but it never said what that evidence would be or why some commonplace words (the USPTO has registered LOVE and FUCK CANCER, among others) can serve as marks and others cannot. The court called the approach "I know it when I see it" and held it inconsistent with the Administrative Procedure Act's requirement of reasoned decisionmaking, noting "the increasing number of failure-to-function refusals in recent years." Judge Lourie dissented, arguing that the record plainly showed the word could not identify a single source and that the case, pending for most of a decade, did not need more Board guidance.

The decision does not hold that FUCK can be registered, and it does not weaken GO & Associates or Vox Populi. What it does is require the Board, on remand and in future cases, to explain the line between widely used words that cannot function and common words that can. Until the Board does so, applicants have a stronger argument that a widely used message refusal must rest on specific findings about the applied-for goods and the way the public encounters the words on them, not on the general popularity of the words. Before citing Brunetti for anything beyond the vacatur, check the Board's decision on remand and the status of the applications in the USPTO's records.

The constitutional backdrop

Failure to function sits next to a line of Supreme Court cases that struck down or upheld content-based limits on registration, and some commentators have argued that the USPTO increasingly uses failure to function to refuse expressive marks it can no longer refuse on other grounds. The cases are worth knowing because applicants raise them and courts have answered them.

Matal v. Tam, 582 U.S. 218 (2017), held that the disparagement clause of Section 2(a) violated the First Amendment because it discriminated on the basis of viewpoint; the story of that case and the related Washington football team dispute is told in The Washington Redskins Trademark Troubles: Disparagement, Matal v. Tam, and the Aftermath. Iancu v. Brunetti applied the same rule to the immoral or scandalous clause. Then Vidal v. Elster, 602 U.S. 286 (2024), upheld the names clause of Section 2(c), which bars registering a living person's name without consent, against a challenge by the applicant for TRUMP TOO SMALL. The Court treated the clause as content based but viewpoint neutral and relied on the long history of restrictions on trademarking names, emphasizing that trademark law has always turned on content in some respects.

Two things follow for failure to function. First, a refusal that applies "evenhandedly, regardless of any viewpoint expressed" is on firm ground; the Federal Circuit accepted that characterization in Brunetti and rejected the constitutional challenge in GO & Associates as resting on a "faulty premise" that informational matter is refused per se. Second, the requirement that a mark identify source is the definition of the thing being registered, not a limit added on top. Elster makes it harder still to argue that the government must register expressive matter that does not do a trademark's job. An applicant who leads with the First Amendment against a failure-to-function refusal should expect to lose; the stronger argument is factual, about how the public perceives the matter, and procedural, about whether the Board explained its standard.

Failure to function outside the examining attorney's office

The same question appears in three other settings, and lawyers on both sides of a dispute should recognize it.

Oppositions and cancellations. A competitor can oppose an application under 15 U.S.C. § 1063 or petition to cancel a registration under 15 U.S.C. § 1064 on the ground that the matter fails to function, as D.C. One did against the I ♥ DC application. For a registration more than five years old, the grounds for cancellation narrow; whether failure to function remains available after five years depends on how it is framed (for example, as genericness or as matter that was never a mark), and the question should be researched for the specific facts. Merchandise sellers who are being threatened with a registered slogan should look at this route early, because it can remove the registration that platforms rely on to take down listings. The procedural roadmap is in the TTAB Practice Toolkit: Oppositions, Cancellations, and the Trademark Trial and Appeal Board from Pleading to Appeal and the Petitioning to Cancel a Trademark Registration: A Practical Checklist.

Infringement litigation. A plaintiff suing under 15 U.S.C. § 1114 or § 1125(a) must own a valid mark, and a defendant can argue that the asserted phrase never functioned as one. A Principal Register registration carries a presumption of validity under 15 U.S.C. § 1115(a), but the presumption is rebuttable. The defendant's own use also matters. In Jack Daniel's, the Supreme Court held that the Rogers test for expressive works does not apply when the defendant uses the accused matter "as a designation of source for the infringer's own goods," and that a parody used as a mark gets no special treatment under the dilution exclusion either. Conversely, the descriptive fair use defense of 15 U.S.C. § 1115(b)(4) protects use "otherwise than as a mark." A merchandise seller who prints a common phrase across a shirt as a message, with its own brand on the label, is in a better position under both doctrines than one who puts the phrase on the neck label. The defenses are developed in Trademark Fair Use: Descriptive Use, Nominative Use, and Expressive Works After Jack Daniel's.

Platform enforcement. Online marketplaces and print-on-demand services generally act on registrations, not on legal analysis. A registered slogan can therefore be used to remove competitors' listings, and a seller whose listing is removed may have no practical recourse except a counter-notice, a negotiated withdrawal, or a cancellation petition. This is the context in which many widely used message registrations do the most harm, and it is a reason examining attorneys look hard at slogans for apparel. The enforcement side is covered in Enforcing Trademarks Against Online Sellers and Platforms: A Practical Guide.

Splits, tensions, and open questions

Failure to function does not produce circuit splits in the usual sense, because nearly all registration appeals go to one court. The tensions are inside the doctrine.

What standard governs widely used words? Brunetti holds that the Board has not supplied one. The Board's working test (whether consumers "are accustomed to seeing" the matter "used by various sources to convey ordinary, familiar, or generally understood concepts or sentiments") explains I ♥ DC and EVERYBODY VS RACISM well, but it does not explain why LOVE, registered for many goods, is different from FUCK. Judge Lourie's dissent offered one answer: the number of meanings a word carries. A word that means one thing can be attached to a source; a word that means everything cannot. Whether the Board adopts that idea, or something like it, will shape the next generation of refusals.

How much does third-party use prove, and whose use counts? The examining attorney's evidence in nearly every merchandise case is a set of screenshots of other sellers' goods bearing the same words. Applicants respond that those sellers are infringers, that print-on-demand platforms let anyone upload any phrase in seconds, and that the evidence is circular: the applicant's own success attracted the copiers whose listings are now used to refuse registration. GO & Associates rejected a version of that argument where the phrase had independent public currency; the Federal Circuit noted that GO had not shown any of the third-party uses were attributable to it. The argument has more force where the phrase was coined by the applicant, the third-party uses all post-date the applicant's launch, and the applicant can show it has policed them. No precedential decision squarely holds that copying of an applicant's own design can be disregarded, and the Board's treatment of this evidence is inconsistent. This is the most important open question for small apparel brands.

Is size still evidence? The "small, neat, and discrete" principle came from a world in which brands lived on labels. Fashion now puts brand names large across garments, and Lululemon acknowledged it. The Board continues to treat large, centered slogans as presumptively ornamental, while accepting that a well-known logo printed large is still a brand. The result is that size works against new brands and does not hurt established ones, which is consistent with consumer perception but harsh on startups.

Can Section 2(f) ever rescue a message? The TMEP says no for widely used messages; Boston Beer points the same way for highly laudatory phrases. But Brunetti emphasized that the Board must say what evidence would rebut a prima facie case, and GO & Associates acknowledged that slogans can carry messages and identify source. An applicant with strong evidence of exclusive association (surveys, policing, unsolicited media attributing the phrase to the brand) has an argument that the matter is not a widely used message at all, even if it began as one. The argument is untested at the Federal Circuit.

How far does the doctrine reach services? Ornamental refusals apply only to goods; for services the analog is a failure-to-function refusal based on how the matter appears in advertising. Hashtags and slogans used in social media campaigns for services raise the question whether the public sees a brand or an invitation to join a conversation. The Board's cases are fact-specific.

What is the role of the USPTO's past registrations? Applicants routinely cite similar registered slogans. The Federal Circuit has said for decades that prior registrations do not bind the Board, In re Nett Designs, Inc., 236 F.3d 1339 (Fed. Cir. 2001), and that each application "must be considered on its own merits," In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567 (Fed. Cir. 1987). Brunetti reaffirmed that rule but added a gloss: the apparent inconsistency of examining attorneys' decisions was "itself strong evidence" that the Board had not articulated coherent rules, and the Board must account for prevailing practice, citing Booking.com. Third-party registrations will not win a case by themselves, but they now have a role in showing that the Board's standard is unclear.

Practical implications for each side

For brand owners and applicants.

• Separate the brand from the message at the design stage. The brand is the name on the label, the hang tag, the neck print, and the website header. The message is what the shirt says. A business that sells message merchandise needs a brand that is not the message.
• If a phrase is the brand, use it the way brands are used: on labels and tags, small and consistent, with ™, in "look for" advertising, on packaging, and as the name of the shop. Keep dated records of that use.
• File for the house mark first, and for slogans only when the evidence will support it. A use-based application with a shirt-front specimen invites an ornamental refusal.
• Watch the clock and the specimen. Under the current rules, a response is due three months from the office action, extendable once by three months for a fee under 37 C.F.R. Part 2. A substitute specimen must show use before the filing date or the applicant must amend to an intent-to-use basis under 15 U.S.C. § 1051(b).
• Expect a widely used message refusal to be final in practice. Spend money on it only where the evidence of exclusive association is real.

For merchandise sellers and print-on-demand businesses.

• Common phrases, holiday greetings, political slogans, and expressions of local pride are generally free for everyone to print, and the USPTO's practice protects that freedom. But a registration that slipped through can still be used to take down listings.
• Check the USPTO's records before printing a phrase that someone claims to own. If a registration exists for a phrase that looks like a widely used message, consider a letter of protest against a pending application, an opposition, or a cancellation petition.
• Keep evidence of your own use and of others' use. The same screenshots that support a refusal also support a defense.

For challengers and their counsel.

• Failure to function is a pleaded ground for opposition and cancellation. The I ♥ DC case shows a complete record: many sellers, many goods, the phrase displayed as a message, and the registrant's own use matching everyone else's.
• In infringement litigation, examine how the plaintiff actually uses the asserted phrase and how the defendant uses it. Use "otherwise than as a mark" supports the descriptive fair use defense; use as the defendant's own brand forfeits Rogers after Jack Daniel's.

For examining attorneys and the Board (as the cases read them). After Brunetti, a refusal should identify the goods, the evidence of how the public encounters the matter on those goods, and the reason the matter cannot point to the applicant specifically. A refusal that rests on the general popularity of a word is vulnerable.

An extended worked example: Juniper & Salt

Return to Dana Okafor and GOOD WATER DAYS. Her application covers "T-shirts; sweatshirts; hats" in Class 25, filed under Section 1(a) with a photograph of the shirt front. The office action refuses registration as merely ornamental, citing TMEP § 1202.03, and requires a response within three months.

Step one: diagnose the refusal. The examining attorney did not issue a widely used message refusal and attached no evidence that the phrase is a common saying. A web search confirms that before Dana's festival shirt, GOOD WATER DAYS appeared only in a few unrelated blog posts. The third-party shirts on print-on-demand sites all appeared after her launch, and four of them copy her lettering exactly. The problem is the specimen, not the phrase.

Step two: look at actual use. Dana's shirts are printed on blanks with the manufacturer's label. But since her second print run, she has used a woven hang tag reading JUNIPER & SALT on one side and GOOD WATER DAYS on the other, and her website's product pages show GOOD WATER DAYS as the name of the collection, with an "add to cart" button next to images of the shirts. The hang tags were in use before the filing date; Dana has invoices from the tag supplier and dated photographs from a craft fair.

Step three: choose the response. Counsel files a substitute specimen showing the hang tag attached to a shirt, with a verified statement that the substitute was in use before the filing date, as 37 C.F.R. § 2.59 requires. The response argues in the alternative that the matter is inherently distinctive as used on the hang tag, that the third-party uses are infringing copies post-dating Dana's launch, and that the examining attorney has made no showing that the phrase is a common expression. It does not claim acquired distinctiveness, because a Section 2(f) claim concedes that the matter is not inherently distinctive and three years of modest sales would be thin evidence.

Step four: plan for the next problem. The hat specimen still shows only the embroidered front. Dana has no tags for hats. Counsel advises her to delete hats from the application (or divide them out and amend that portion to intent-to-use), to add woven labels to the hats going forward, and to file a statement of use with a label specimen later.

Step five: deal with the copiers. While the application is pending, Dana cannot use a registration to remove the print-on-demand copies. Her photograph is protected by copyright, and the copied lettering may be too, so counsel sends takedown notices on that basis. Once the registration issues, platform trademark complaints become available. The secondary-source argument is not available to her yet, because Juniper & Salt is not known as a source of other goods, but every hang tag, label, and "look for" post builds the record she would need if a future application draws an ornamental refusal for a large-print design.

The outcome. The examining attorney accepts the substitute specimen for shirts and sweatshirts, withdraws the ornamental refusal, and approves the mark for publication. The hats go forward later under a statement of use. The lesson is the usual one: the cure for an ornamental refusal is most often a better specimen, and the best time to create that specimen is before filing. The step-by-step response is in Overcoming a Failure-to-Function or Ornamental Refusal: A Practical Guide; the templates Dana's counsel used, including a specimen audit worksheet and a response outline, are in the Trademark Function Toolkit: Specimen Audits, Secondary Source Evidence, and Office Action Response Outlines.

Change one fact and the result changes. Suppose Dana's phrase had been RIVER TOWN STRONG, adopted after a flood, and the examining attorney had attached forty examples of local businesses, churches, and fundraisers using it. A hang tag would not help, because the problem would be the public's use of the words, not the way Dana displays them. Her best option would be to register JUNIPER & SALT and sell RIVER TOWN STRONG shirts under it, alongside everyone else.

Common mistakes

1. Filing the phrase instead of the brand. Many small businesses file for the slogan on their best-selling shirt and never file for the business name that appears on the tag.
2. Using a photograph of the shirt front as the specimen. For clothing, the examining attorney will almost always treat large front-and-center text as ornamental. Use a tag, label, or neck print where one exists.
3. Arguing originality. "I came up with it first" answers a question nobody asked. The question is what buyers perceive.
4. Claiming Section 2(f) by reflex. A 2(f) claim concedes the matter is not inherently distinctive and, for a widely used message, does not help. Use it only with real evidence, and consider claiming it in the alternative.
5. Leaning on third-party registrations. Prior registrations of similar slogans do not bind the Board. Cite them to show inconsistency or industry practice, not as precedent.
6. Adding a house mark to cure the refusal. Amending GOD BLESS THE USA to THE LEE GREENWOOD COLLECTION GOD BLESS THE USA was refused as a material alteration. The house mark belongs in a separate application.
7. Treating the Supplemental Register as a cure for every refusal. It works for ornamental matter that is capable of becoming a mark. It does not work for widely used messages, and a Supplemental registration can be cancelled on that ground.
8. Leading with the First Amendment. The Federal Circuit has rejected that argument against failure-to-function refusals. Argue facts and the adequacy of the Board's reasoning instead.
9. Ignoring the third-party evidence. If the examining attorney attaches other sellers' goods, the response must address each category: copies of the applicant, unrelated uses, and genuine public currency.
10. Missing the deadline. The three-month response period is short, and an unanswered office action leads to abandonment. See the Responding to a Trademark Office Action Checklist: A Practical Checklist.

Frequently asked questions

Can I trademark a slogan? Yes, if it identifies the source of goods or services. JUST DO IT and A DIAMOND IS FOREVER are registered slogans. A slogan that is merely a common message, or that appears only as decoration on the product, will be refused.

Why was my T-shirt design refused when other T-shirt brands have registrations? Most registered apparel marks are registered for the brand name as it appears on labels and tags, or for logos that have acquired distinctiveness or identify a secondary source. Your application is judged on your specimen and your evidence, and prior registrations do not bind the examining attorney.

Does putting ™ next to my slogan make it a trademark? No. The ™ symbol signals a claim, and it can help show intent and "look for" use, but intent is not the test. The Board has repeatedly said an applicant's wish that a phrase function as a mark does not make it one.

Is a hashtag easier to register than a phrase? No. TMEP § 1202.18 treats the # as adding little or nothing. A hashtag must function as a mark in the same way a phrase must.

My application was refused as a widely used message. Can I appeal? Yes, to the Trademark Trial and Appeal Board under 15 U.S.C. § 1070, and then to the Federal Circuit or a district court under 15 U.S.C. § 1071. But the Federal Circuit reviews whether a mark functions as a source identifier for substantial evidence, and it affirmed in GO & Associates and Vox Populi. Brunetti gives applicants an argument when the Board's reasoning is unclear, not a presumption of reversal.

Will a Supplemental Register registration stop copycats? Only partly. It allows the ® symbol, blocks later confusingly similar applications, and is a basis for a federal infringement suit, but it carries no presumption of validity or ownership. Platforms vary in whether they accept Supplemental registrations for brand-protection programs.

Does failure to function matter if I never file at the USPTO? Yes. To enforce common-law rights in a phrase, you must show it functions as your mark. A defendant can argue that your phrase is ornamental or a common message, and courts apply the same consumer-perception logic.

Can I stop someone else from registering a common phrase? Yes. File a letter of protest while the application is being examined, oppose it after publication under Section 13, or petition to cancel the registration under Section 14. The I ♥ DC case is the model.

Takeaways

• Trademark law protects source identifiers, not phrases or designs. Originality, popularity, and commercial value do not substitute for function.
• The USPTO's failure-to-function refusals rest on Sections 1, 2, 3, and 45 of the Lanham Act, and the Federal Circuit has confirmed the doctrine in Vox Populi, GO & Associates, and Brunetti.
• Ornamental refusals are usually a specimen problem and are often curable with a label, tag, or packaging specimen, a secondary-source showing, Section 2(f) evidence, or the Supplemental Register.
• Widely used message refusals are usually a phrase problem and are rarely curable. The best response is often a different mark.
• Brunetti requires the Board to articulate a standard for widely used words. Watch the remand and the Board's next precedential decisions.
• The same question arises in oppositions, cancellations, infringement suits, and platform takedowns, and both sides should build their records accordingly.

This document is general information, not legal advice for any particular situation. Trademark examination practice and the case law in this area change, and the facts of each application matter.

Related Documents

Related Articles

• Genericness, Genericide, and Acquired Distinctiveness: Where Trademark Protection Begins and Ends: the distinctiveness spectrum that failure to function sits beside.
• The Washington Redskins Trademark Troubles: Disparagement, Matal v. Tam, and the Aftermath: the constitutional cases that shaped expressive-mark examination.
• Trademark Fair Use: Descriptive Use, Nominative Use, and Expressive Works After Jack Daniel's: use "otherwise than as a mark" in infringement defense.
• Trademark Use and Protection: How Brand Rights Are Born, Built, and Lost: how use creates rights in the first place.
• Who Owns the Brand: Trademark Ownership Disputes Between Co-Founders, Bands, Licensees, and Distributors: ownership fights that often arise over merchandise marks.
• Protecting a Trademark Abroad: The Madrid Protocol, Territoriality, and Abitron v. Hetronic: what happens when a U.S. application is the basis for foreign filings.
• Rebranding Without Regret: Clearance, Transition, and Protecting the Old Mark While Launching the New One: clearing a new brand and protecting the old mark during a rebrand.

Related Guides

• Overcoming a Failure-to-Function or Ornamental Refusal: A Practical Guide: the step-by-step response to the refusals described here.
• Proving Acquired Distinctiveness and Defeating a Genericness Challenge: A Practical Guide: building a Section 2(f) record.
• Common-Law Rights, the Supplemental Register, and the Principal Register: A Practical Guide: what the Supplemental Register gives and withholds.
• Enforcing Trademarks Against Online Sellers and Platforms: A Practical Guide: marketplace enforcement once a registration issues.
• Running a Rebrand: A Practical Legal Guide: clearing a new brand and protecting the old mark during a rebrand.

Related Checklists

• Failure-to-Function Refusal Response Checklist: A Practical Checklist: every task in a response, in order.
• Trademark Specimen Preparation Checklist: A Practical Checklist: specimens that show matter used as a mark.
• Responding to a Trademark Office Action Checklist: A Practical Checklist: deadlines and mechanics for every office action.
• Petitioning to Cancel a Trademark Registration: A Practical Checklist: the challenger's route against a registered message.
• Rebrand Legal Checklist: A Practical Checklist: clearing a new brand and protecting the old mark during a rebrand.

Related Toolkits

• Trademark Function Toolkit: Specimen Audits, Secondary Source Evidence, and Office Action Response Outlines: worksheets, declarations, and response outlines for each refusal type.
• Distinctiveness Toolkit: Secondary Meaning Declarations, Genericness Surveys, and Brand Usage Guidelines: declarations and surveys for acquired distinctiveness.
• TTAB Practice Toolkit: Oppositions, Cancellations, and the Trademark Trial and Appeal Board from Pleading to Appeal: ex parte appeals and inter partes proceedings.
• Trademark Registration Toolkit: A Roadmap from Brand Idea to Federal Registration and Maintenance: the full filing roadmap.
• Rebrand Toolkit: Clearance Memos, Transition Plans, and Legacy Mark Maintenance Records: clearing a new brand and protecting the old mark during a rebrand.