Summary. This checklist turns a USPTO failure-to-function or ornamental refusal into a sequence of specific tasks, from docketing the response deadline to registration, appeal, or a better refiling. It is organized in phases: intake and deadlines, a specimen and drawing audit, classification of the refusal, fact and evidence gathering for each refusal type, strategy and concessions, drafting, filing, and the handling of a final refusal through reconsideration and ex parte appeal. Each item names the governing statute, rule, or case and adds a short practical note. Red-flag boxes mark the points where responses most often fail, including manufactured specimens, material alterations, waived alternative claims, and evidence held back until the record has closed. A deadlines table, a phase for third parties who want to stop a message from registering, a short worked example, and a list of common failure points close the checklist.

How to use this checklist

Work through the phases in order. Phases 1 to 3 should be finished within the first week after the office action issues, because they determine whether the case is a quick specimen fix or a contested evidentiary fight. Phases 4 to 7 build and file the response. Phases 8 and 9 apply only after a final refusal. Phase 10 applies whenever the better course is a new application, and Phase 11 is for the other side: a seller, nonprofit, or competitor who wants to stop someone else from registering a common phrase.

Each item is phrased as a task. Check it when it is done, not when it is assigned. Authority is linked where the governing statute, rule, or case is available; TMEP and TBMP sections are cited by number. The doctrine is explained in Failure to Function and Ornamental Refusals: Why Slogans, Hashtags, and Merchandise Designs Get Rejected; the narrative version of these steps, with a full worked example, is Overcoming a Failure-to-Function or Ornamental Refusal: A Practical Guide; and the worksheets, declarations, and response outlines referenced below are in the Trademark Function Toolkit: Specimen Audits, Secondary Source Evidence, and Office Action Response Outlines.

The governing rule in one sentence. Matter is registrable only if it is used "to identify and distinguish" the applicant's goods or services "and to indicate the source," 15 U.S.C. § 1127, read with 15 U.S.C. §§ 1051 and 1052; whether it does so is a question of fact about how the relevant public perceives it, In re Vox Populi Registry Ltd., 25 F.4th 1348 (Fed. Cir. 2022).

Phase 1: Intake and deadlines

  • Record the issue date and calculate the response deadline. Generally three months from issuance, with one three-month extension available for a fee. Authority: 37 C.F.R. Part 2 (§ 2.62). Note: use the period stated in the office action; some Madrid-based applications have been subject to different periods.
  • Diary an internal deadline two weeks before the real one. Evidence gathering always takes longer than planned.
  • Decide now whether an extension will be needed, and if so, docket the extension request before the original deadline. Note: the extension must be requested, with the fee, on or before the original deadline.
  • Note whether the action is nonfinal or final. A final action changes the menu (Phase 8).
  • List every refusal and requirement in the action. Failure to function (with its subcategory), Section 2(d), Section 2(e)(1), identification, disclaimer, specimen defects unrelated to function, and any other items. Note: an unanswered item can lead to abandonment of the whole application or of the affected classes.
  • Record the filing basis for each class: Section 1(a), 1(b), 44(d)/(e), or 66(a). Authority: 15 U.S.C. § 1051, § 1126, § 1141f. Note: a Section 66(a) application cannot change its basis.
  • Download the complete file history from TSDR, including the specimen as filed and every attachment to the office action.
  • Confirm who owns the application and who has authority to sign declarations. Note: an application filed by the wrong owner is void; ownership problems in merchandise businesses are common. See Who Owns the Brand: Trademark Ownership Disputes Between Co-Founders, Bands, Licensees, and Distributors.
  • Send the client a short intake memo explaining the refusal in plain language, the deadline, and the facts and documents needed (Phase 4 request list).
  • Record the client's goal for the registration (stopping copiers, ® use, foreign filing, licensing) and the fallback the client will accept.

Red flag: the deadline is the only thing that cannot be fixed later. A missed response leads to abandonment. A petition to revive under 37 C.F.R. § 2.66 requires unintentional delay and must be filed promptly (generally within two months of the notice of abandonment). Docket both the response and the extension deadline on day one.

Phase 2: Specimen and drawing audit

  • Place the drawing, the specimen, and the identification of goods side by side. Authority: 37 C.F.R. § 2.56 (specimens must show the mark as actually used in commerce on or in connection with the goods or services). Note: use the specimen audit worksheet in the toolkit.
  • Confirm the specimen shows the mark exactly as drawn. A mismatch is a separate defect that must be cured regardless of function.
  • Record where the mark appears on the specimen: chest, back, sleeve, hem, neck label, hang tag, woven label, packaging, product page.
  • Record its size relative to the goods and whether it is the dominant visual element. Authority: TMEP § 1202.03(a) (a small, neat, and discrete mark may create a trademark impression; a large rendition emblazoned across the goods may be seen as ornamental). Note: size is evidence, not a per se rule, In re Lululemon Athletica Canada Inc., 105 USPQ2d 1684 (TTAB 2013).
  • Check whether anything else on the specimen identifies source (a house mark on the tag or label). Note: a different brand on the label can support the view that the applied-for matter is decoration.
  • For webpage specimens, confirm the page is a display associated with the goods: the mark near the goods, a picture of the goods, price, and a means of ordering. Authority: In re Sones, 590 F.3d 1282 (Fed. Cir. 2009); In re Siny Corp., 920 F.3d 1331 (Fed. Cir. 2019).
  • For services, confirm the specimen shows the mark used in the sale or advertising of the services, not merely as a social media tag or a description of an activity. Note: hashtag service marks often fail here (TMEP § 1202.18).
  • Match each specimen to each item of goods. A shirt photograph does not support hats, mugs, or stickers.
  • Ask the client for every other way the mark appears: hang tags, neck labels, care labels, packaging, stickers, retail displays, invoices showing the mark as a product name, and website product pages, each with the date of first use.
  • Collect proof of the date of first use for each candidate substitute specimen: supplier invoices, dated photographs, archived web pages, shipping records.

Red flag: manufactured specimens. A tag made after the office action and photographed on one shirt cannot be filed as a specimen in use before the filing date. A false verified statement can void the application and create exposure in later litigation. If the tag is new, amend to Section 1(b) (Phase 5). Digitally altered images and mockups are refused as specimens.

Phase 3: Classify the refusal

  • Identify the refusal category the examining attorney actually relied on, not just the heading. Authority: TMEP § 1202.03 (ornamental), § 1202.04 (informational), § 1202.04(b) (widely used messages), § 1202.18 (hashtags), §§ 1202.08 and 1202.09 (titles and performer names).
  • Read the examining attorney's evidence and decide whether the refusal depends on the specimen or on the words. A specimen-driven refusal is usually ornamental; a words-driven refusal is usually informational or a widely used message.
  • For a hashtag, analyze the wording without the #. If the wording would fail on its own, the hashtag adds nothing.
  • Check whether two refusals overlap (for example, ornamental and widely used message). Plan to defeat the more serious one first.
  • Write down the available cures for each refusal, using this map:
Refusal Substitute specimen Amend to § 1(b) Inherent distinctiveness Secondary source § 2(f) Supplemental Register
Ornamental Yes Yes Yes Yes Yes Yes, if capable
Informational Rarely helps Rarely helps Rarely No Rarely Generally no
Widely used message No No No No Generally no No
Hashtag Sometimes Sometimes Depends on wording Rarely Sometimes Depends on wording
  • Record the client's fallback for each class (Supplemental Register, deletion, new application, abandonment).
  • Confirm with the client in writing which path you are taking and why.

Red flag: arguing ornamentation against a message refusal. If the examining attorney attached evidence of public use of the words, the case is about the words. A hang tag will not help, and a response that argues only size and placement will lose. Treat it as a widely used message case.

Phase 4: Facts and evidence

For every refusal

  • Interview the client about the history of the mark: when and why it was adopted, how it is used, where it appears on each product, who designed it, and how customers refer to it.
  • Collect the client's own marketing showing the matter: website, social media, catalogs, trade-show materials, packaging, and press.
  • Search for third-party uses yourself before the examining attorney's evidence becomes the only evidence. Save dated captures.

Ornamental refusals

  • Gather evidence of trade practice showing that matter of this kind is unusual in the field, or that brands in the field commonly appear in this form. Authority: Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342 (C.C.P.A. 1977) (common basic design; unique or unusual in the field; mere refinement of a commonly adopted form of ornamentation; separate commercial impression).
  • For secondary source, collect proof that the applicant uses or has registered the matter as a mark for other goods or services: registrations, service-mark specimens, advertising, signage, customer base and history. Authority: TMEP § 1202.03(c). Note: use the secondary-source declaration in the toolkit.
  • For Section 2(f), assemble sales and advertising figures by year, "look for" advertising, unsolicited media, policing history, and any survey. Authority: 37 C.F.R. § 2.41; In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985). Note: raw totals are weak unless the promotion featured the matter as a brand. For the full evidence list see the Acquired Distinctiveness and Genericness Evidence Checklist: A Practical Checklist.

Informational and widely used message refusals

  • Build a chart of every item of third-party evidence the examining attorney attached, with its date, source, goods, and how the words are used.
  • Classify each item: copy of the applicant's goods; independent use after the applicant's launch; use in unrelated contexts; independent use on the same goods before the applicant's launch; use attributing the phrase to the applicant. Note: the last category is what the Federal Circuit found missing in In re GO & Associates, LLC, 90 F.4th 1354 (Fed. Cir. 2024).
  • Document the applicant's priority and policing: launch date, cease-and-desist letters, platform takedowns, and results.
  • Collect evidence of association with the applicant: unsolicited media attributing the phrase to the applicant, customer communications, retailer declarations, and (where justified) a survey.
  • Assess honestly whether the evidence of independent public use on the same goods is strong. If it is, advise the client that the realistic outcome is refusal and discuss Phase 10 now.

Red flag: declarations that state conclusions. "Consumers recognize LEAVE IT BETTER as our brand" proves nothing. Declarations must state facts the declarant knows: how long, where, how much, what customers said, what the declarant saw. Identical form declarations from customers carry little weight.

Phase 5: Strategy and concessions

  • Decide whether to file a substitute specimen. Authority: 37 C.F.R. § 2.59 (substitute must have been in use in commerce at least as early as the filing date, or before the statement-of-use deadline, supported by a verified statement). Note: where a substitute exists, lead with it.
  • If the better specimen post-dates the filing date, decide whether to amend the basis to Section 1(b). Authority: 37 C.F.R. § 2.35; 15 U.S.C. § 1051(b). Note: the applicant must verify a bona fide intention to use as of the filing date; see Intent-to-Use Trademark Applications: A Practical Guide.
  • Decide whether to delete or divide goods without adequate specimens. Note: division protects the strong classes from the weak ones.
  • Decide whether to argue inherent distinctiveness. Authority: In re Soccer Sport Supply Co., 507 F.2d 1400 (C.C.P.A. 1975); In re Swift & Co., 223 F.2d 950 (C.C.P.A. 1955).
  • Decide whether to argue secondary source, and in what order.
  • Decide whether to claim Section 2(f), and if so, state expressly that it is claimed in the alternative. Authority: 15 U.S.C. § 1052(f). Note: an unqualified 2(f) claim concedes that the matter is not inherently distinctive.
  • Decide whether to request the Supplemental Register, in the alternative or outright. Authority: 15 U.S.C. § 1091; 37 C.F.R. § 2.75. Note: not available for widely used messages; an intent-to-use application must first have an acceptable allegation of use; Supplemental registrations carry no presumption of validity, 15 U.S.C. § 1094. See Common-Law Rights, the Supplemental Register, and the Principal Register: A Practical Guide.
  • Rule out amending the drawing to add a house mark or other matter. Authority: 37 C.F.R. § 2.72 (no material alteration); In re Lee Greenwood, 2020 USPQ2d 11439 (TTAB 2020) (adding THE LEE GREENWOOD COLLECTION to GOD BLESS THE USA refused as a material alteration).
  • Record each concession the chosen strategy makes, and confirm the client accepts it.
  • Decide whether to call or email the examining attorney to test a proposed substitute specimen or amendment.

Red flag: waived alternatives. The Board decides the arguments the applicant made. The applicant in Lululemon never claimed Section 2(f), even in the alternative, and the Board decided the case on inherent distinctiveness and secondary source alone. Claim every alternative you may need on appeal in the response or the request for reconsideration.

Phase 6: Draft the response

  • Open with a summary listing each refusal and requirement and how the response answers it.
  • Put amendments and substitute specimens first, with the verified statement for each substitute.
  • State the legal standard accurately: the Section 45 definition; consumer perception based on specimens and marketplace evidence; the examining attorney's initial burden to establish a prima facie case. Authority: In re Brunetti, No. 2023-1539 (Fed. Cir. Aug. 26, 2025).
  • For a widely used message refusal, argue the standard. Commonality alone "is not the test"; the Board must explain why some commonplace matter can serve as a mark and other matter cannot; findings must address the identified goods. Authority: Brunetti; GO & Associates (informational matter registrable "so long as the mark also functions to identify a single commercial source").
  • Walk through the third-party evidence chart and explain the weight of each category.
  • Present the applicant's evidence of association with specific citations to exhibits.
  • State every alternative claim expressly (Section 2(f) in the alternative; Supplemental Register in the alternative, if authorized).
  • Cite third-party registrations only for what they can show (trade practice, inconsistency), not as binding precedent. Authority: In re Nett Designs, Inc., 236 F.3d 1339 (Fed. Cir. 2001); In re Cordua Restaurants, Inc., 823 F.3d 594 (Fed. Cir. 2016). Note: make registrations of record with copies from USPTO records, not a list.
  • Remove arguments that do not help: originality, intent, the First Amendment. Note: the Federal Circuit rejected the constitutional challenge in GO & Associates and the viewpoint and retaliation arguments in Brunetti.
  • Answer every other refusal and requirement in the same response.
  • Label every exhibit and explain in the text what each one proves.
  • Have the declarant review and sign declarations under 37 C.F.R. § 2.20 with personal knowledge of each fact.
  • Read the response once as the examining attorney would, asking: can I approve this without rereading the file?

Phase 7: File and follow up

  • File through the USPTO's electronic system before the deadline and save the filing receipt.
  • Confirm in TSDR that the response, specimen, and exhibits were received and are legible.
  • Report to the client with a copy of the response and the next expected step.
  • Diary a status check if no action issues within the USPTO's current pendency for responses.
  • If the examining attorney issues a new nonfinal action, return to Phase 3 for any new refusal.
  • If the mark is approved for publication, diary the publication date and the 30-day opposition window under 15 U.S.C. § 1063, and advise the client on monitoring.

Phase 8: Final refusal

  • Recalculate the deadline for the final action and docket it.
  • Decide whether new evidence or a new amendment can resolve the refusal. If so, prepare a request for reconsideration under 37 C.F.R. § 2.63.
  • File the notice of appeal and per-class fee within the response period, together with any request for reconsideration. Authority: 15 U.S.C. § 1070; 37 C.F.R. §§ 2.141, 2.142. Note: a request for reconsideration does not extend the appeal deadline.
  • Put all evidence in the record before the appeal is filed. Authority: 37 C.F.R. § 2.142(d) (evidence should be of record before the appeal; later evidence is generally excluded absent remand for good cause). Note: the request for reconsideration is the last convenient opportunity.
  • Diary the appeal brief deadline: 60 days from the notice of appeal or from resumption after reconsideration. Authority: 37 C.F.R. § 2.142(b).
  • Brief the appeal as appellate work on a closed record. Frame the issue as consumer perception on the identified goods; present the evidence chart; hold the Board to a stated standard under Brunetti; point out any inconsistency with the Board's own precedent.
  • Diary the reply brief deadline after the examining attorney's brief, and decide whether to request oral hearing.
  • Consider a request to remand if genuinely new evidence becomes available, with a showing of good cause.

Red flag: evidence saved for the appeal. Evidence attached to an appeal brief will ordinarily be excluded. If a survey, declaration, or additional captures matter, file them with the request for reconsideration.

Phase 9: Review beyond the Board

  • Diary the deadline for review on the day the Board's decision issues. Authority: 15 U.S.C. § 1071; 37 C.F.R. § 2.145.
  • Advise on the Federal Circuit route: closed record; substantial evidence review of whether the matter functions as a mark. Authority: Dickinson v. Zurko, 527 U.S. 150 (1999); GO & Associates; Vox Populi. Note: a realistic win is often a remand for reasoned decisionmaking, as in Brunetti.
  • Advise on the district court route: new evidence, de novo determination, higher cost, and the expenses provision of § 1071(b)(3). Authority: Booking.com B.V. v. USPTO, 915 F.3d 171 (4th Cir. 2019); Peter v. NantKwest, Inc., 589 U.S. 23 (2019). Note: NantKwest construed the same "all the expenses of the proceeding" language in the patent statute and rejected fee shifting, which undercuts the Fourth Circuit's contrary trademark ruling in Shammas v. Focarino, 784 F.3d 219 (4th Cir. 2015); confirm the USPTO's position in the particular case before advising.
  • Compare the cost of review with the cost of a new application (Phase 10) and document the client's decision.

Phase 10: Refile, reposition, and counsel the client

  • Recommend filing the house mark that appears on tags, labels, and storefronts, if not already filed.
  • Consider a composite mark (house mark plus slogan) in a new application, expecting a disclaimer requirement for the message.
  • Consider a new application with a label-based specimen or on an intent-to-use basis if the refused application's problem was the specimen.
  • Advise the client on labeling practice for merchandise: put the brand on a neck label, woven tag, or hang tag; use the ™ symbol consistently; keep the brand small and consistent; keep dated records of first use for each label. Note: the merchandise labeling guide in the toolkit is written for clients.
  • Advise on copyright registration for original artwork and lettering, and on copyright-based takedowns. See Copyright vs. Trademark: What Is the Difference?.
  • Advise on enforcement while the application is pending, including platform complaints and their limits. See Enforcing Trademarks Against Online Sellers and Platforms: A Practical Guide.
  • Time the abandonment of the refused application so the new application is on file first.

Phase 11: For third parties opposing registration of a message

Deadlines table

Event Deadline Authority Note
Response to nonfinal or final office action Generally 3 months from issuance 37 C.F.R. § 2.62 Confirm period stated in the action
Extension of response period One 3-month extension, requested with fee by original deadline 37 C.F.R. § 2.62 Not automatic
Substitute specimen Must show use as of filing date (1(a)) or before SOU deadline 37 C.F.R. § 2.59 Verified statement required
Petition to revive after abandonment Generally 2 months from notice of abandonment 37 C.F.R. § 2.66 Unintentional delay standard
Request for reconsideration of final refusal Within the response period 37 C.F.R. § 2.63 Does not extend appeal deadline
Notice of appeal to TTAB Within the response period for the final action 37 C.F.R. § 2.142(a) Per-class fee
Appeal brief 60 days from notice of appeal or resumption 37 C.F.R. § 2.142(b) No new evidence
Review of Board decision Short deadline set by rule 15 U.S.C. § 1071; 37 C.F.R. § 2.145 Diary on decision day
Opposition (third parties) 30 days from publication, extendable 15 U.S.C. § 1063 Extensions by request
Cancellation (third parties) Grounds narrow after 5 years 15 U.S.C. § 1064 Research the ground

Short worked example

Halvorsen Coffee Roasters, a two-store café in Portland, sells mugs and shirts reading DRINK GOOD COFFEE in large type, with HALVORSEN on the bottom of the mug and on the shirt's neck label. Its Section 1(a) application for DRINK GOOD COFFEE draws a refusal citing TMEP § 1202.04 and attaching thirty examples of other roasters and sellers using the same words on mugs, signs, and shirts.

Phase 1: the deadline is docketed, and the client's goal (stopping a competing café from using the phrase) is recorded. Phase 2: the specimen shows the phrase as the main design element; nothing else shows the phrase used as a brand. Phase 3: the refusal is words-driven, an informational or widely used message case, and no specimen will help. Phase 4: the evidence chart shows twenty-two independent uses on the same goods, most pre-dating Halvorsen. Phase 5: counsel advises that the realistic outcome is refusal and that the client's goal cannot be achieved by trademark law, because the phrase belongs to everyone. Phase 10: the client files HALVORSEN for coffee, café services, mugs, and shirts; lets the slogan application lapse after the new filing; and registers the copyright in its mug illustration. Total cost is a fraction of an appeal, and the client ends up with a registration that actually does what it wanted: it identifies the café.

Common failure points

  1. Treating every refusal as a specimen problem. Words-driven refusals need a different strategy or a different mark.
  2. Filing a substitute specimen with no proof of date.
  3. Adding a house mark to the refused matter instead of filing it separately.
  4. Leaving Section 2(f) and Supplemental Register alternatives unstated.
  5. Ignoring the examining attorney's third-party evidence.
  6. Holding evidence back until after the appeal is filed.
  7. Arguing originality, intent, or the First Amendment.
  8. Failing to match specimens to every item in the identification.
  9. Not advising the client on labeling practice, so the next application meets the same refusal.
  10. Missing the response or post-Board deadlines.

This checklist is general information, not legal advice for any particular situation. Confirm current USPTO rules, fees, and periods before acting.

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