Section 2 refusals
Section 2(e)(5): Functional Matter — Trademark Office Action Guide
Functional features — shapes, designs, or elements essential to product use or that affect cost or quality — cannot be monopolized as trademarks.
What the USPTO is saying
The examining attorney believes your mark consists of functional product design or packaging. Granting exclusive trademark rights would hinder competition by limiting useful product features.
Why this issue is raised
Patent law protects useful inventions for a limited time; trademark law must not extend that protection indefinitely. Functional matter belongs in the public domain.
How applicants typically overcome it
- Argue alternative designs exist and the feature is not essential to use.
- Provide evidence the design was chosen for branding, not utility (advertising, design history).
- Submit a utility patent or expired patent showing the feature is not protected elsewhere.
- Amend to a non-functional portion of the mark if the overall design is registrable.
Related Office Action issues
Frequently asked questions
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