Overcoming a Failure-to-Function or Ornamental Refusal: A Practical Guide

Summary. This guide walks an applicant and its counsel, step by step, from the day a failure-to-function or ornamental refusal arrives to registration, appeal, or a better-planned refiling. It starts with the decisions to make before drafting anything: which refusal is really driving the case, what the client actually needs from a registration, and which cures are available for that refusal. The numbered steps cover docketing, auditing the specimen against the drawing and goods, classifying the refusal, gathering facts and analyzing the examining attorney's third-party evidence, choosing among substitute specimens, amendment to an intent-to-use basis, inherent distinctiveness and secondary source arguments, Section 2(f), and the Supplemental Register, and building declarations and other evidence. Later steps cover drafting and filing the response, handling a final refusal by reconsideration and ex parte appeal to the TTAB, review in the Federal Circuit or district court, and refiling with a better mark or specimen, plus the tools available to third parties who want to stop a message from being registered. A timeline and cost table, an extended worked example involving an outdoor apparel and guiding business, common mistakes, an FAQ, and takeaways close the guide.

Priya Lindqvist founded Northbound Outfitters in Duluth, Minnesota, as a canoe-guiding company in 2015. The merchandise came later: a compass-rose logo with NORTHBOUND across it, first on staff shirts, then on hats sold at the boathouse, then on a web store that now brings in more revenue than the trips. Last spring Priya filed three trademark applications on her own. Over the summer, three office actions arrived on the same afternoon. The logo application for shirts and hats was refused as "merely ornamental." The application for LEAVE IT BETTER, the slogan on her best-selling water bottle and T-shirt, was refused as a "widely used message," with forty pages of screenshots from other sellers, park services, and nonprofits. The application for #PADDLENORTH for guided canoe tours was refused because the hashtag "would be perceived only as a social media tag."

Priya's question to her new lawyer was blunt: which of these can we win, what will it cost, and what do I do if we lose? Those are the right questions, and they have different answers for each refusal. An ornamental refusal is often a specimen problem that a better photograph solves in a month. A widely used message refusal is usually a problem with the words themselves, and no amount of money changes it. A hashtag refusal sits in between. This guide is the process for telling them apart and doing something about each one.

The doctrine behind these refusals, and the leading cases, are explained in Failure to Function and Ornamental Refusals: Why Slogans, Hashtags, and Merchandise Designs Get Rejected. This guide assumes that background and concentrates on what to do.

The short answer

• Read the refusal before reacting to it. The statutory basis will usually be Sections 1, 2, (3,) and 45 of the Lanham Act, 15 U.S.C. §§ 1051, 1052, 1053, and 1127. The category (ornamental, informational, widely used message, hashtag) and the evidence attached tell you which cures are realistic.
• The fastest cure is usually a better specimen. A hang tag, neck label, woven label, or packaging showing the mark used as a brand often resolves an ornamental refusal outright. The substitute must have been in use before the application filing date, under the specimen rules in 37 C.F.R. Part 2; if it was not, amending to an intent-to-use basis under 15 U.S.C. § 1051(b) keeps the filing date.
• Argue in the alternative. Inherent distinctiveness, secondary source, acquired distinctiveness under Section 2(f), and the Supplemental Register under 15 U.S.C. § 1091 can be layered, but each has a cost and some concede points.
• Widely used message refusals rarely yield to evidence of the applicant's own success. The question is how the public uses the words. The response must engage the third-party evidence item by item and, after In re Brunetti (Fed. Cir. Aug. 26, 2025), insist that any refusal rest on a stated standard and specific findings about the identified goods.
• Amendments to the mark are narrow. Adding a house mark to a refused slogan is usually a material alteration, as the applicant learned in In re Lee Greenwood (TTAB 2020). The house mark belongs in a new application.
• A final refusal leaves two paths: reconsideration and appeal. Both must be started within the response period. The evidentiary record closes when the appeal is filed, so put everything in before then. Board decisions on function are reviewed for substantial evidence, which favors the agency, as In re GO & Associates, LLC, 90 F.4th 1354 (Fed. Cir. 2024), shows.
• Sometimes the best response is a new application. A house mark, a composite mark, a different specimen, or an intent-to-use filing with a plan for label use may reach registration faster and more cheaply than a fight over a message.

Before you start: five decisions

1. What does the client actually need?

A registration is a tool. Before investing in a response, identify what the client wants it to do.

Copyright is often overlooked. A distinctive graphic, an illustrated design, or original lettering on a shirt may be protected by copyright even when it cannot function as a trademark, and copyright takedowns are often faster on marketplaces than trademark complaints. The trademark/copyright distinction is set out in Copyright vs. Trademark: What Is the Difference?.

2. Which refusal is really driving the case?

The office action will name the refusal and usually cite TMEP sections. The categories differ sharply in curability.

When more than one refusal issues, the most serious one governs. If the examining attorney issued both ornamental and widely used message refusals, a hang tag will not solve the problem; the response must defeat the widely used message refusal on its own terms.

3. What is the filing basis?

The basis determines which cures are available.

• Section 1(a) use-based applications carry a specimen from day one, and ornamental refusals usually issue in the first action. Substitute specimens and amendment to Section 1(b) are both available.
• Section 1(b) intent-to-use applications normally do not draw ornamental refusals until a specimen is filed with an amendment to allege use or statement of use, though the examining attorney may refuse earlier if the drawing and description show the matter is ornamental on its face (TMEP § 1202.03(e)). Widely used message refusals can issue at any time, because they turn on the words, not the specimen.
• Section 44 and Section 66(a) applications rely on a foreign registration or an international registration and have no specimen at filing, but they can still be refused if the matter is ornamental on its face or is a widely used message. The Board rejected the argument that an ornamental refusal was premature for a combined 1(b) and 44(e) application in In re Lululemon Athletica Canada Inc., 105 USPQ2d 1684 (TTAB 2013). Applications under 15 U.S.C. § 1126 and 15 U.S.C. § 1141f have limited flexibility: a Section 66(a) application cannot change its basis at all, and a Section 44 application can add or substitute a use basis only under the rules on changing basis in 37 C.F.R. § 2.35.

4. What else is in the office action?

Failure-to-function refusals rarely arrive alone. Look for likelihood of confusion under Section 2(d), descriptiveness under Section 2(e)(1), identification-of-goods requirements, disclaimer requirements, and specimen requirements unrelated to function (a digitally altered image, a mockup, a webpage without a means of ordering). Every refusal and requirement must be answered in one response, or the application will be abandoned as to the unanswered items. The general mechanics are in the Responding to a Trademark Office Action Checklist: A Practical Checklist.

5. What is the budget, and what is the fallback?

Set the fallback before you start. For an ornamental refusal, the fallback might be the Supplemental Register or a new application with a label specimen. For a widely used message refusal, the fallback is usually a different mark. Knowing the fallback prevents spending appeal-level money on a refusal that the client could avoid with a new filing.

Step 1: Docket the deadlines and read the office action closely

What to do. Calendar the response deadline the day the office action issues. Under the Trademark Modernization Act rules, applicants generally have three months to respond to an office action, with one three-month extension available for a fee under 37 C.F.R. Part 2 (§ 2.62). (Different periods have applied to some Madrid-based applications; confirm the period stated in the office action itself.) Then read the action for four things: the statutory sections cited, the TMEP sections cited, whether the action is nonfinal or final, and the evidence attached.

Why. The evidence is the case. In a widely used message refusal, the attachments are the record the Board and any reviewing court will weigh, and the response must address them. In an ornamental refusal, the examining attorney's description of the specimen ("the wording appears in large letters across the front of the shirt") tells you exactly what a substitute specimen must fix.

Pitfalls. Missing the deadline leads to abandonment; a petition to revive under § 2.66 is available only for unintentional delay and must be filed promptly, generally within two months of the notice of abandonment. Do not assume an extension is automatic; it must be requested and the fee paid before the original deadline.

Timing and cost. Same day. Internal time only.

Step 2: Audit the specimen against the drawing and the goods

What to do. Put the specimen, the drawing, and the identification of goods side by side and answer these questions:

1. Does the specimen show the mark exactly as it appears in the drawing? A mismatch is a separate problem that must be fixed regardless of function.
2. Where does the mark appear: front and center, on a tag, on a label, on packaging, on a webpage?
3. How large is it relative to the goods? Is it the dominant feature or a discrete element?
4. Does anything else on the specimen identify source (a house mark on the tag, a brand on the label)?
5. For a webpage specimen, is it a point-of-sale display associated with the goods, with the mark near the goods and a means of ordering? The Federal Circuit's tests are in In re Sones, 590 F.3d 1282 (Fed. Cir. 2009), and In re Siny Corp., 920 F.3d 1331 (Fed. Cir. 2019).
6. Which goods does each specimen cover? A shirt photograph does not support hats.

Why. The ornamental doctrine is about commercial impression. TMEP § 1202.03(a) explains that a small, neat, and discrete word or design (for example, over a pocket) may create the impression of a trademark, while a large rendition emblazoned across the goods may be seen as decoration. The Board treats size and placement as evidence, not as a per se rule, but on a shirt-front photograph they usually decide the case.

Pitfalls. Clients often send the most attractive photograph, which is usually the front of the product. Ask specifically for tags, labels, neck prints, packaging, and shipping materials, and ask when each was first used.

Timing and cost. One to three days. Paralegal or associate time. The specimen audit worksheet in the Trademark Function Toolkit: Specimen Audits, Secondary Source Evidence, and Office Action Response Outlines organizes the work.

Step 3: Classify the refusal and map the cures

What to do. Decide which category the refusal really belongs to, using the table above, and then write down which cures are legally available and which are practically available given the client's facts.

A simple decision path.

1. Is the matter a common expression, sentiment, slogan, or social, political, religious, or patriotic message, and has the examining attorney attached evidence of public use? If yes, treat the case as a widely used message case regardless of what else the action says. Go to Step 6 for the evidence and Step 7 for the arguments, and set the fallback now.
2. Is the matter information about the goods or the seller (origin, quality, use, safety)? If yes, treat it as informational. The realistic cure is usually a different mark.
3. Is the matter a design, pattern, or wording that is unregistrable only because of how it appears on the specimen? If yes, it is an ornamental case. Start with Step 4 (better specimen) and build alternatives.
4. Is the matter a hashtag? Separate the # from the wording and analyze the wording first. If the wording would be ornamental, informational, or a message without the #, the hashtag adds nothing.

Why. Each category has different evidence, different arguments, and different fallback positions. A response that argues inherent distinctiveness against a widely used message refusal wastes the client's money and the examining attorney's patience.

Authority. The Federal Circuit has confirmed that the source-identifier requirement "is broader than just whether a proposed mark is generic or descriptive," In re Vox Populi Registry Ltd., 25 F.4th 1348 (Fed. Cir. 2022), and that informational matter can be registered "so long as the mark also functions to identify a single commercial source," GO & Associates.

Timing and cost. One day. Counsel time.

Step 4: Look for a better specimen, and decide whether to change the basis

What to do. Ask the client for every way the mark appears on or with the goods, with dates: hang tags, woven or printed neck labels, care labels, heat-transfer neck prints, packaging, stickers on polybags, retail displays, and website product pages. For each, record when it was first used in commerce. Then decide among three options.

• Substitute specimen. If a better specimen was in use before the application filing date (for a Section 1(a) application), submit it with the verified statement required by 37 C.F.R. § 2.59(a) that it was in use in commerce at least as early as the filing date. For a statement of use or amendment to allege use, the substitute must have been in use before the deadline for filing the statement of use.
• Amend to Section 1(b). If the better specimen came later, the applicant can amend the basis to intent-to-use under 37 C.F.R. § 2.35, keeping the original filing date, and later file an amendment to allege use or statement of use with the new specimen. The applicant must verify a bona fide intention to use the mark in commerce as of the filing date. This is the standard move when the client has just started using hang tags in response to the refusal. See Intent-to-Use Trademark Applications: A Practical Guide.
• Delete or divide goods. If the better specimen covers some goods and not others, delete the uncovered goods or divide them into a separate application that can be amended to Section 1(b). Do not let one weak class hold the rest hostage.

Why. A specimen that shows the mark on a label or tag presents the matter the way consumers expect brands to appear. Where the refusal rests only on the specimen, a new specimen can end the case without any argument. The Lululemon and Hulting cases show the limits: where the drawing or description itself shows the matter is ornamental (Lululemon's mark was described as a wave design "applied to the front of a garment"), or where the matter is a message rather than a badly displayed brand (the applicant in In re Hulting, 107 USPQ2d 1175 (TTAB 2013), filed substitute specimens for NO MORE RINOS! on bumper stickers, shirts, and buttons, and the Board still affirmed because the phrase was a commonly used political slogan), a new specimen will not help.

Pitfalls.

• Manufactured specimens. A tag created after the office action, photographed on a single shirt, and submitted as evidence of use before the filing date is a false statement. Specimens must show actual use in commerce, and digitally altered or mocked-up images are refused and can lead to sanctions. Verify the date of first use of every substitute with invoices, photographs, or supplier records.
• The tag must show the applied-for mark. A hang tag that says JUNIPER & SALT does not support an application for GOOD WATER DAYS unless GOOD WATER DAYS also appears on it, used as a mark.
• Labels that show only the blank manufacturer. Many small apparel brands print on blanks that carry the blank maker's label. If the client's mark never appears on a tag or label, there is no substitute to file, and the client should start using one now and amend to Section 1(b).
• Amending the drawing. A new specimen often tempts clients to change the mark ("let's add our logo"). Amendments that materially alter the mark are prohibited under 37 C.F.R. § 2.72, as Greenwood illustrates. The specimen must match the existing drawing.

Timing and cost. One to two weeks to gather and verify. Modest legal fees. The specimen requirements generally are covered in the Trademark Specimen Preparation Checklist: A Practical Checklist.

Step 5: Choose the arguments, and decide what to concede

What to do. Decide which of the following arguments to make, in what order, and which to make only in the alternative.

Inherent distinctiveness. Argue that the matter, as used, is not merely ornamental: it is unusual in the field, it is not a refinement of a common decorative motif, and its principal function is to identify source with ornamentation merely incidental. The Court of Customs and Patent Appeals put the standard this way in In re Soccer Sport Supply Co., 507 F.2d 1400 (C.C.P.A. 1975): an ornamental design can be inherently distinctive "if it is arbitrary and distinctive and if its principal function is to identify and distinguish the source," but "a design which is a mere refinement of a commonly-adopted and well-known form of ornamentation" will be seen as decoration. The Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342 (C.C.P.A. 1977), questions (common basic design, unique or unusual in the field, mere refinement, separate commercial impression) organize the argument. In re Swift & Co., 223 F.2d 950 (C.C.P.A. 1955), is the applicant's best older case; In re Chippendales USA, Inc., 622 F.3d 1346 (Fed. Cir. 2010), where the cuffs-and-collar costume was held a refinement of existing ornamentation in the field, shows how the argument fails.

Secondary source. Argue that consumers recognize the matter as identifying a source of other goods or services, so that its appearance on the goods signals sponsorship or origin. TMEP § 1202.03(c) allows this where the applicant shows it has used or registered the matter as a mark for other goods or services, or that the matter is otherwise recognized as the applicant's mark. The Board in Lululemon described it as showing "that the applicant has used or registered the design in a non-ornamental manner for other goods or services." The evidence is the applicant's registrations, its service mark use, advertising, and public recognition. This route is strongest for businesses whose merchandise grew out of an existing service or product line: a band, a university, a restaurant, a guiding company.

Acquired distinctiveness under Section 2(f). Argue that the matter has become distinctive through use. The evidence (declarations, length and exclusivity of use, advertising, sales, unsolicited media, surveys) is governed by 37 C.F.R. § 2.41 and is set out in Proving Acquired Distinctiveness and Defeating a Genericness Challenge: A Practical Guide and the Acquired Distinctiveness and Genericness Evidence Checklist: A Practical Checklist. The five-year claim of substantially exclusive and continuous use under Section 2(f) is prima facie evidence that the examining attorney may accept or reject; for ornamental matter it rarely suffices alone.

Supplemental Register. Amend under 37 C.F.R. § 2.75 to seek registration under 15 U.S.C. § 1091 for matter "capable of distinguishing" the goods. For a use-based application, no waiting period applies; an intent-to-use application cannot be amended to the Supplemental Register until an acceptable allegation of use is filed. In In re Todd Co., 290 F.2d 597 (C.C.P.A. 1961), the court allowed Supplemental Register registration of a surface design for safety paper because designs of that kind were used in the trade to indicate origin.

Rebuttal of third-party evidence. In any widely used message or informational refusal, attack the examining attorney's evidence directly. Step 6 explains how.

What each option concedes.

Why. The examining attorney and the Board evaluate the arguments the applicant makes. An unclaimed alternative is usually waived. Lululemon is a cautionary tale: the applicant never claimed Section 2(f), even in the alternative, and the Board decided the case on inherent distinctiveness and secondary source alone.

Timing and cost. One to two weeks to settle strategy with the client.

Step 6: Build the evidence

What to do. Assemble an evidence file that matches the arguments chosen.

For a specimen-based cure: the substitute specimen, a declaration under 37 C.F.R. § 2.20 verifying the date of first use, and supporting business records (tag invoices, dated photographs).

For inherent distinctiveness: evidence of the trade's practices showing that matter of this kind is unusual in the field, and examples of competitors' goods showing that their decoration differs. Third-party registrations of comparable matter for the same goods are admissible but carry limited weight; prior registrations do not bind the Board, In re Nett Designs, Inc., 236 F.3d 1339 (Fed. Cir. 2001), and registrations issued under Section 2(f) say nothing about inherent distinctiveness. Make third-party registrations of record properly (copies from the USPTO database, not a list), because a list alone is not evidence.

For secondary source: the applicant's registrations for other goods or services; specimens and advertising for the services; evidence of the size and reach of the primary business (customers, years, geographic scope, media coverage); and declarations from the applicant and, where possible, from customers or trade members stating that they recognize the matter as identifying the applicant. The secondary-source declaration template in the Trademark Function Toolkit: Specimen Audits, Secondary Source Evidence, and Office Action Response Outlines lays out the structure.

For Section 2(f): sales and advertising figures by year, samples of "look for" advertising tying the matter to the brand, unsolicited media references attributing the matter to the applicant, evidence of policing and the end of third-party uses, and survey evidence where the stakes justify it. In In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985), the advertising campaign that featured the color pink as the brand was decisive. Raw sales and advertising totals, without evidence that the promotion featured the matter as a mark, are weak, as the Federal Circuit said in Vox Populi: advertising and sales volumes "while relevant, are not by themselves dispositive of how consumers perceive a mark."

For rebutting third-party evidence in a widely used message case: build a chart of every item the examining attorney attached and classify each one.

Why. In GO & Associates, the Federal Circuit noted that GO "did not argue that any of the dozens of third-party uses" were trademark uses attributable to it, and GO's search-engine data did not distinguish public adoption of a protest message from recognition of GO's brand. A response that engages the evidence item by item gives the Board something to weigh.

Pitfalls. Applicant declarations stating the conclusion ("consumers recognize LEAVE IT BETTER as our brand") carry little weight. Customer declarations prepared by the applicant on a form, with identical wording, carry less than declarants expect. Surveys designed for litigation can be persuasive but are expensive and must ask about the identified goods.

Timing and cost. Two to six weeks. Fees range from modest (specimen declaration) to substantial (a survey in a contested case).

Step 7: Draft the response

What to do. Structure the response so the examining attorney can accept it without rereading the file.

1. Introduction and summary of the response. List each refusal and requirement and say how it is answered.
2. Amendments. Identify any amendment to the basis, the goods, or the register, and any substitute specimen, first. If a substitute specimen resolves the refusal, say so plainly.
3. The legal standard. State it accurately: the matter must identify and distinguish the applicant's goods and indicate their source under Section 45; whether it does so is a question of how the relevant public perceives it, based on the specimens and other evidence of marketplace use. The examining attorney bears the initial burden to establish a prima facie case; in Brunetti both sides accepted that burden, and the Federal Circuit faulted the Board for not explaining what evidence would rebut it.
4. The facts. How the applicant uses the mark, where, since when, and how the public encounters it.
5. The arguments. Lead with the strongest. For an ornamental refusal: inherent distinctiveness as used on the substitute specimen, then secondary source, then Section 2(f) in the alternative. For a widely used message refusal: the classification of the third-party evidence, the absence of goods-specific findings, the evidence of association with the applicant, and the Brunetti point that commonality alone is not the test.
6. Alternative requests. State expressly any alternative claim (Section 2(f) in the alternative; amendment to the Supplemental Register in the alternative, if the client accepts it).
7. Responses to other refusals and requirements.

Authority to cite. The statute and the Federal Circuit's cases (Vox Populi, GO & Associates, Brunetti), the Board's precedential decisions on the category, and the TMEP. Quote the Federal Circuit's statement in GO & Associates that 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," and its examples of slogans that do both.

What not to argue. Do not lead with originality ("we coined it"), intent ("we use it as a brand"), or the First Amendment. The Federal Circuit has rejected the constitutional argument in GO & Associates and the viewpoint-discrimination and retaliation arguments in Brunetti. Do not rely on third-party registrations as binding precedent; use them, if at all, to show inconsistency that the Board must explain.

Pitfalls. Long responses that bury the substitute specimen on page eleven. Arguments that concede the matter is a message ("our customers buy it because they love the outdoors") while arguing it is a brand. Evidence attached without explanation of what it shows.

Timing and cost. One to two weeks of drafting. The response outlines for each refusal type are in the Trademark Function Toolkit: Specimen Audits, Secondary Source Evidence, and Office Action Response Outlines, and the item-by-item tasks are in the Failure-to-Function Refusal Response Checklist: A Practical Checklist.

Step 8: File, and consider talking to the examining attorney

What to do. File through the USPTO's electronic system before the deadline, attaching evidence in a format the system accepts and labeling each exhibit. Consider a telephone or email conversation with the examining attorney before filing, particularly for specimen issues. Examining attorneys can often say whether a proposed substitute specimen would be acceptable, and an examiner's amendment can sometimes resolve minor issues without a written response.

Why. Examining attorneys handle large dockets. A short call to confirm that a hang-tag specimen would resolve the refusal can save a round of office actions.

Pitfalls. Informal conversations are not binding, and arguments must still be made of record. Do not send evidence by email in place of filing it.

Timing. The USPTO typically takes weeks to a few months to act on a response; check current pendency figures.

Step 9: After a final refusal, reconsider and appeal at the same time

What to do. If the examining attorney maintains the refusal, the next action will be final. The applicant then has the response period to do one or more of the following:

• Comply. Submit the substitute specimen, amendment, or claim that resolves the refusal, if one is now available.
• Request reconsideration. File a request for reconsideration with new arguments or evidence under 37 C.F.R. § 2.63. A request for reconsideration does not extend the deadline to appeal.
• Appeal to the Trademark Trial and Appeal Board. File a notice of appeal and the per-class appeal fee under 15 U.S.C. § 1070 and 37 C.F.R. § 2.141 and § 2.142, within the response period for the final action.

The usual practice is to file the request for reconsideration and the notice of appeal together. The Board will suspend the appeal and remand to the examining attorney to consider the request; if the examining attorney does not withdraw the refusal, the appeal resumes.

Why. The appeal record closes when the appeal is filed. Under 37 C.F.R. § 2.142(d), the record should be complete before the appeal, and evidence submitted afterward will ordinarily not be considered unless the Board grants a remand for good cause. The request for reconsideration is the applicant's last chance to add evidence (more declarations, a survey, a fuller analysis of the third-party evidence) without a remand request.

The appeal itself. The applicant's brief is due within 60 days of the notice of appeal (or of the resumption of the appeal after reconsideration); the examining attorney files a brief in response; the applicant may file a reply brief within 20 days; and an oral hearing is available on request. The governing procedure is the Trademark Trial and Appeal Board Manual of Procedure, chapter 1200. The Board reviews the refusal on the record and decides whether the examining attorney has made out the refusal and whether the applicant has rebutted it.

How to brief a failure-to-function appeal after Brunetti. Frame the issue as one of consumer perception on the identified goods. Lay out the record evidence by category (the chart in Step 6). Argue the standard: commonality alone "is not the test," the Board has acknowledged; the Federal Circuit has held the Board must articulate why some commonplace matter can serve as a mark and other matter cannot; and the Board cannot rely on an "I know it when I see it" approach. Then show why, under any coherent standard, the applicant's evidence of association and the character of the third-party evidence favor registration. Where the Board's own precedent seems inconsistent with the refusal, say so, with citations; Brunetti noted that when the Board reaches inconsistent results in nearly identical situations, remand is required.

Pitfalls. Introducing new evidence with the appeal brief (it will be excluded). Abandoning arguments made below (they may be waived). Treating the appeal as a second response rather than as appellate briefing on a fixed record.

Timing and cost. A Board decision typically issues many months after briefing closes; check current Board pendency. Fees: the per-class USPTO appeal fee under the current schedule, and substantially more attorney time than the original response. The USPTO's current fees were set in the fiscal-year 2025 fee rule, Setting and Adjusting Trademark Fees During Fiscal Year 2025 (corrected at 90 Fed. Reg. 3038 (Jan. 14, 2025)); confirm amounts on the USPTO's fee schedule before quoting them to a client. The TTAB process generally is mapped in the TTAB Practice Toolkit: Oppositions, Cancellations, and the Trademark Trial and Appeal Board from Pleading to Appeal.

Step 10: Review beyond the Board

What to do. If the Board affirms, the applicant may appeal to the Federal Circuit under 15 U.S.C. § 1071(a) and 28 U.S.C. § 1295, or bring a civil action in district court under § 1071(b). The deadlines are set by 37 C.F.R. § 2.145 and are short; calendar them on the day of the Board's decision.

The Federal Circuit route. The court reviews the Board's decision on the existing record under the Administrative Procedure Act, 5 U.S.C. § 706, and Dickinson v. Zurko, 527 U.S. 150 (1999). Legal conclusions are reviewed de novo; findings of fact, including whether matter functions as a mark, are reviewed for substantial evidence, In re Hotels.com, L.P., 573 F.3d 1300 (Fed. Cir. 2009). The applicant lost on that standard in Vox Populi and GO & Associates; it won a remand in Brunetti by showing that the Board had not articulated the standard it applied. The realistic goal of a Federal Circuit appeal in a function case is usually a remand for a reasoned decision, not an order to register.

The district court route. A civil action under § 1071(b) allows the applicant to submit new evidence, including surveys and live testimony, and the court decides registrability de novo on the expanded record. The tradeoffs are cost and expenses: § 1071(b)(3) requires the applicant to pay "all the expenses of the proceeding" in ex parte cases. The Fourth Circuit held in Shammas v. Focarino, 784 F.3d 219 (4th Cir. 2015), that those expenses include the USPTO's attorney's fees, and it applied that rule in Booking.com B.V. v. USPTO, 915 F.3d 171 (4th Cir. 2019), while noting the rule had been called into question. Later that year the Supreme Court held that the parallel patent provision does not shift attorney's fees, Peter v. NantKwest, Inc., 589 U.S. 23 (2019). Section 1071(b)(3) uses the same "all the expenses of the proceeding" language that NantKwest construed, so the reasoning of Shammas is widely regarded as superseded; even so, ask the USPTO's counsel at the outset whether the agency will seek any fees, and get the answer in writing before the client commits to the district court route. The Supreme Court's decision in USPTO v. Booking.com B.V., 591 U.S. 549 (2020), shows why the route can be worth it: the applicant's survey evidence, developed in district court, carried the case on consumer perception.

Timing and cost. A Federal Circuit appeal typically takes a year or more from notice of appeal to decision. A district court action takes longer and costs more, particularly with survey evidence. Both are justified only where the mark is central to the business.

Step 11: Refile, redesign, or reposition

What to do. When a refusal is unlikely to be overcome, or when overcoming it would cost more than a new filing, plan the next application. Options include:

• File the house mark. The name that appears on the client's tags, labels, and storefront is usually registrable when the slogan is not. This is often the best money a merchandise business can spend.
• File a composite mark in a new application. A house mark combined with a slogan (for example, NORTHBOUND LEAVE IT BETTER) may register, with a disclaimer of the unregistrable wording if required, because the house mark identifies source. Expect the examining attorney to require a disclaimer of the message and to consider whether the composite as a whole still reads as a message.
• File with a label-based specimen or on an intent-to-use basis. If the problem was the specimen, a new application with a proper specimen (or under Section 1(b) with a plan to use the mark on labels) avoids the prosecution history of the refused application.
• Change the way the mark is used. Move the matter from the chest to the tag, use it consistently with ™, and build "look for" advertising. Over time, this creates both a better specimen and Section 2(f) evidence.
• Protect the design by copyright. Original artwork and lettering can be registered with the Copyright Office and enforced on platforms through copyright notices.

Why. Prosecution history matters. Arguments made and evidence submitted in a refused application remain part of the public record, and a second application for the same matter on the same evidence will likely meet the same refusal; the Federal Circuit noted in Vox Populi that administrative preclusion may bar repetitive applications in some circumstances. A new application should be meaningfully different: different matter, a different basis, or a different record.

Pitfalls. Letting the refused application go abandoned before the new application is filed can create a gap in the record of the client's claims; consider timing. Filing the composite without checking for conflicts with the house mark's own clearance.

For the other side: stopping a message from being registered

Merchandise sellers, nonprofits, and competitors who use a common phrase sometimes find that someone has applied to register it. The tools are:

• Letter of protest. While the application is pending and before publication (or shortly after), a third party may submit evidence relevant to a ground for refusal, such as examples of widespread third-party use, through the USPTO's letter-of-protest procedure. Evidence is limited and must be relevant; the Director decides whether to forward it. The procedure is explained in Expungement, Reexamination, and Letters of Protest: The Trademark Modernization Act in Practice.
• Opposition. After publication, any person who believes it would be damaged may oppose under 15 U.S.C. § 1063, pleading that the matter fails to function. See Filing a TTAB Notice of Opposition: A Practical Checklist.
• Cancellation. After registration, a petition to cancel under 15 U.S.C. § 1064 may plead failure to function. D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710 (TTAB 2016), sustained an opposition and cancelled a Supplemental Register registration of I ♥ DC on that ground. Research the five-year limits of § 1064 for any registration older than five years.
• Defense in litigation. A defendant sued on a registered slogan can attack validity and argue its own use is "otherwise than as a mark" under the descriptive fair use defense of 15 U.S.C. § 1115(b)(4). Courts can also order cancellation in litigation; see Trademark Cancellation in Federal Litigation: A Practical Guide.

The evidence that wins for the challenger is the same evidence that loses for the applicant: dated examples of many independent sellers using the phrase as a message on the same kinds of goods, and the applicant's own use looking just like everyone else's.

Timeline and cost overview

USPTO fees are charged per class, under the fiscal-year 2025 fee rule cited in Step 9.

Worked example: Northbound Outfitters, step by step

The three applications. Priya's applications are (A) the NORTHBOUND compass-rose logo for "shirts; hats" in Class 25, Section 1(a), specimen a photograph of a shirt with the logo eight inches wide across the chest; (B) LEAVE IT BETTER for "T-shirts; water bottles" in Classes 25 and 21, Section 1(a), specimens photographs of the shirt front and the side of the bottle; and (C) #PADDLENORTH for "guided canoe tour services" in Class 41 (identified as arranging and conducting guided outdoor tours), Section 1(a), specimen an Instagram post reading "Tag your trip photos #PADDLENORTH!"

Before you start. Counsel and Priya agree on goals. The logo matters most: it is on everything and the copiers target it. The slogan is a nice-to-have. The hashtag matters for a planned trip package. Fallbacks: Supplemental Register or a new label-based application for the logo; abandon the slogan; refile the hashtag as a word mark.

Step 1 (docket). Deadlines are calendared three months out, with an extension noted for application B in case evidence takes longer.

Step 2 (audit). Application A: the logo dominates the shirt front; the hats show it embroidered large on the front panel. But since 2019, every Northbound shirt has carried a printed neck label with the compass-rose logo and NORTHBOUND beneath, and every hat has a woven side tag with the logo. Supplier invoices date both. Application B: the slogan appears as the main graphic on the shirt and in large type on the bottle; no tag or label bears it. Application C: the Instagram post invites customers to tag photos; it does not advertise the services under the hashtag.

Step 3 (classify). A is an ornamental case. B is a widely used message case: the forty pages show LEAVE IT BETTER in national-park signage, outdoor nonprofits' campaigns, a scout troop's motto, and on dozens of independent sellers' shirts and stickers, many pre-dating Northbound. C is a hashtag case, but the wording PADDLENORTH is not a common message and the examining attorney found no third-party uses.

Step 4 (specimens). For A, counsel files substitute specimens: the neck label on a shirt and the woven tag on a hat, each with a verified statement of use before the filing date. For C, the Northbound website has, since before the filing date, a booking page headed "#PADDLENORTH Overnight Trips" with a "Book now" button. Counsel files it as a substitute specimen.

Step 5 (arguments). For A, counsel argues inherent distinctiveness as used on the labels, and secondary source in the alternative: Northbound has used the compass-rose logo as a service mark for guided tours since 2015, on its boathouse signage, website, canoes, and staff uniforms, and holds a registration for the logo for those services. Section 2(f) is claimed in the alternative with a declaration of eight years of use. For B, counsel advises that the evidence is too strong: independent, pre-existing public use of the phrase as an environmental ethic on the same goods. Priya decides to let B go and to file NORTHBOUND (word) and a composite NORTHBOUND LEAVE IT BETTER instead. For C, counsel argues that the hashtag, as used on the booking page, names the trip package and identifies Northbound as its provider, and that PADDLENORTH is not a common expression.

Step 6 (evidence). For A: the service-mark registration, photographs of the boathouse sign and canoes, website screenshots, a declaration from Priya, and declarations from two regional outdoor retailers that carry Northbound merchandise and recognize the logo as Northbound's. For C: the booking page, a declaration describing the trip package and bookings under the hashtag name, and evidence that no other provider uses PADDLENORTH.

Step 7 (draft). Each response leads with the substitute specimen, states the standard from Section 45 and Vox Populi, and makes the alternative arguments expressly.

Step 8 (file). Before filing A, counsel emails the examining attorney to confirm that neck-label and woven-tag specimens would be considered; the examining attorney confirms they are acceptable types of specimen for clothing.

Results. Application A is approved for publication on the substitute specimens; the secondary source and Section 2(f) arguments become unnecessary, and the Section 2(f) claim, made only in the alternative, is withdrawn at counsel's request so that the registration does not carry a Section 2(f) notation. Application C draws a final refusal: the examining attorney accepts that the booking page is an acceptable services specimen in form, but maintains that consumers will see #PADDLENORTH as an invitation to tag social media posts, citing TMEP § 1202.18 and Northbound's own Instagram use.

Step 9 (final refusal for C). Counsel files a request for reconsideration with evidence of the trip package's sales and a declaration that the package is booked under that name, together with a notice of appeal. The examining attorney denies reconsideration. Rather than brief the appeal, Priya decides on Step 11: file PADDLENORTH (without the #) for the tour services, with the booking page amended to read "PaddleNorth Overnight Trips," and let the hashtag application lapse after the new application is filed. The word mark, without the social-media framing, is approved on first action.

Step 11 (reposition). Northbound now registers its house mark, logo, and trip name, sells LEAVE IT BETTER shirts under the NORTHBOUND label alongside everyone else, and registers the copyright in its original compass-rose artwork so that print-on-demand copies can be removed by copyright notice as well as trademark complaint.

Common mistakes

1. Arguing before auditing. Many ornamental refusals are solved by a label the client already uses. Ask for every tag and label first.
2. Filing a substitute specimen without proof of its date. The verified statement must be true. Gather invoices and photographs.
3. Ignoring the attached evidence. A response to a widely used message refusal that does not address the examining attorney's examples will lose.
4. Conceding by accident. A Section 2(f) claim not expressly made in the alternative concedes lack of inherent distinctiveness. A Supplemental Register amendment changes the register for every class unless the application is divided.
5. Trying to add a house mark to the refused matter. A material alteration will be refused; file a new application.
6. Saving evidence for the appeal. The record closes when the appeal is filed. Use the request for reconsideration.
7. Relying on the First Amendment or on originality. Neither answers the question of consumer perception.
8. Appealing a widely used message refusal without a plan. If the evidence of public use is strong, the realistic result of an appeal is affirmance, or at best a remand. Weigh that against a new filing.
9. Forgetting the hats. Each class and each item must be supported by a specimen. Divide or delete rather than lose the application.
10. Missing the post-Board deadlines. Federal Circuit and district court deadlines are short and run from the Board's decision.

Frequently asked questions

How long do I have to respond to a failure-to-function refusal? Generally three months from the office action, with one three-month extension available for a fee. Confirm the period stated in the action.

Can I just send a better photo? Yes, if it shows the mark as used in commerce before the filing date (or before the statement-of-use deadline), and if the refusal rests on the specimen rather than the words. Include a verified statement of the date of use.

What if my tags are new? Amend the application to Section 1(b), keep the filing date, and file an amendment to allege use or statement of use with the new tag specimen once it is in use in commerce.

Is the Supplemental Register worth it? For ornamental designs that are capable of becoming marks, often yes: it provides the ® symbol, a basis for blocking later confusingly similar applications, and a basis for an infringement suit. It does not provide presumptions of validity or ownership, and it is not available for widely used messages.

Do surveys help? In a high-stakes case, a well-designed survey asking whether consumers of the identified goods perceive the matter as identifying one source can be strong evidence, and it is the kind of evidence the Board said Brunetti could have offered without saying what form it should take. Most ex parte responses do not justify the cost.

Can I cite other registered slogans? You can, but prior registrations do not bind the examining attorney or the Board. After Brunetti, they are more useful to show inconsistency the Board must explain than as precedent.

What changed after Brunetti? The Federal Circuit required the Board to articulate a standard for when commonplace matter can and cannot serve as a mark. Refusals now need specific findings, and applicants can argue the absence of a coherent standard. The case was remanded; check its current status.

Should I appeal to the Federal Circuit or go to district court? The Federal Circuit is faster and cheaper but limited to the Board record and deferential review. District court allows new evidence but costs more, and the expenses provision of § 1071(b)(3) must be considered.

Takeaways

• Diagnose first: ornamental, informational, widely used message, or hashtag. The cures differ.
• The best response to an ornamental refusal is usually a better specimen, with Section 1(b) as the fallback for new tags.
• Make every argument you might need, expressly in the alternative, before the appeal closes the record.
• Engage the third-party evidence item by item in a widely used message case, and hold the Board to a stated standard after Brunetti.
• Do not try to cure a message by adding a brand to the same application; file the brand separately.
• Know when to stop. A new application for the house mark, a composite, or a better-used mark is often faster and cheaper than an appeal.

This document is general information, not legal advice for any particular situation. USPTO practice, fees, and deadlines change; confirm current requirements before acting.

Related Documents

Related Articles

• Failure to Function and Ornamental Refusals: Why Slogans, Hashtags, and Merchandise Designs Get Rejected: the doctrine and the leading cases behind each step here.
• Genericness, Genericide, and Acquired Distinctiveness: Where Trademark Protection Begins and Ends: the distinctiveness spectrum and Section 2(f).
• Expungement, Reexamination, and Letters of Protest: The Trademark Modernization Act in Practice: third-party tools against pending applications.
• Who Owns the Brand: Trademark Ownership Disputes Between Co-Founders, Bands, Licensees, and Distributors: who is entitled to file for merchandise marks in the first place.
• 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

• Proving Acquired Distinctiveness and Defeating a Genericness Challenge: A Practical Guide: the Section 2(f) evidence file.
• Intent-to-Use Trademark Applications: A Practical Guide: amending to Section 1(b) and later use filings.
• Common-Law Rights, the Supplemental Register, and the Principal Register: A Practical Guide: the Supplemental Register fallback.
• Trademark Cancellation in Federal Litigation: A Practical Guide: challenging a registered message in court.
• Filing an International Trademark Application Under the Madrid Protocol: A Practical Guide: using the U.S. filing abroad once it is clean.
• 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: the steps in this guide as check-off tasks.
• Trademark Specimen Preparation Checklist: A Practical Checklist: specimens that pass examination.
• Responding to a Trademark Office Action Checklist: A Practical Checklist: deadlines and other refusals.
• Acquired Distinctiveness and Genericness Evidence Checklist: A Practical Checklist: evidence for Section 2(f) claims.
• Filing a TTAB Notice of Opposition: A Practical Checklist: the challenger's route.
• 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.
• TTAB Practice Toolkit: Oppositions, Cancellations, and the Trademark Trial and Appeal Board from Pleading to Appeal: ex parte appeal and inter partes practice.
• Distinctiveness Toolkit: Secondary Meaning Declarations, Genericness Surveys, and Brand Usage Guidelines: declarations and surveys.
• Brand Ownership Toolkit: Assignment Agreements, Founder IP Clauses, and Ownership Evidence Files: ownership records that support the application.
• Rebrand Toolkit: Clearance Memos, Transition Plans, and Legacy Mark Maintenance Records: clearing a new brand and protecting the old mark during a rebrand.