Here is a link to the webcast recording of the November 5th panel discussion at Northeastern Law School, entitled “The Original Sin of Trademark Law: Failure to Function.” Thank you to my co-panelists, to the attendees, and to Northeastern Law School and the Boston Intellectual Property Patent Law Society (BPLA) for hosting this event.

What can we learn from the recent increase (see failure-to-function (FTF) refusals at the USPTO? For example, in recent months the TTAB has affirmed refusals to register words (e.g., SCOOP for ice cream), phrases (e.g., QUESTION OF THE DAY for a trivia website) and even a design (graphic tool for use with disk jockey software.) Is the USPTO falling back on a core principle to encompass a variety of vulnerabilities (such as mere descriptiveness, non-use as a mark, unacceptable specimens)? Is there a goal simply to make it more difficult to register dubious marks?  What are the strategic implications for applicants and challengers? This panel will cover a range of views and insights from trademark lawyers, brand owners and academia.


  • Susan Barbieri Montgomery, Executive Professor of Law and Business, Northeastern University


  • Daniel McKinnon, Head of Global Brand Protection and Senior Counsel, New Balance
  • Josh Jarvis, Partner and Co-Chair, Trademark, Copyright & Unfair Competition Practice, Foley Hoag LLP
  • John L. Welch, Author, TTABlog and Counsel, Wolf Greenfield & Sacks PC
  • Alexandra Roberts, Associate Professor, University of New Hampshire School of Law


  • Susan Barbieri Montgomery, Executive Professor of Law and Business, Northeastern University

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Text Copyright John L. Welch 2019.