How to Prevail on a Refusal Based on Ornamentation

The objective of a trademark is to be a source indicator. If your trademark (your words, design, slogan, or trade dress) is merely a decorative feature, then it will be refused by the United States Patent & Trademark Office (USPTO) on the basis of ornamentation. Similar to the way trademarks are categorized along a continuum ranging from the strongest marks as the fanciful marks and the weakest as the merely descriptive ones, ornamental matter is also thought of in the same manner. Certain ornamental matter will be registrable on the Principal Register because it functions as a trademark while “purely” ornamental matter cannot register on the Principal Register or the Supplemental Register.

Whether your ornamental mark registers on the Principal Register, the Supplemental Register, or is refused on both depends on four factors considered by the USPTO Examiners:

1. the commercial impression of the proposed mark;
2. the relevant practices of the trade;
3. secondary source, if applicable; and
4. evidence of distinctiveness. If a refusal is made on the basis of ornamentation, trademark counsel advocating on the applicant’s behalf should argue all four of these factors in response to the Office Action.

Commercial Impression

The Examining Attorney will look to the size, placement, and dominance of the proposed mark in relationship to the goods to determine if it functions as a trademark. One of the most frequently asked questions by our prospective clients is: If I use a phrase or slogan on the front of a T-shirt, will this be perceived as a trademark? Of course, like many answers to legal questions, “it depends”. Generally, this type of use on a shirt will be refused as not functioning as a trademark. However, if secondary source is shown (discussed below) then possibly, this use may be acceptable. If the average consumer views a feature as decorative, informational, or as conveying a message, then it will not function as a trademark because it will not indicate source. Slogans or phrases used on T-shirts, hats, jewelry, ceramic plates, or bumper stickers are often refused unless secondary source or acquired distinctiveness can be shown.

Practice of the Trade

To evaluate whether a proposed trademark is inherently distinctiveness, it is critical to review the subject matter involved in the mark and determine if it is unique for a particular industry or a mere refinement of a common ornamentation for a particular type of goods. An example of this rule can be found in the sneaker industry, where it is common to find a stripe design at the side of the shoe. Even a creative stripe design may be considered to be a simple modification of a well-known form of a decorative feature. See In re Chung, Jeanne & Kim Company, Inc., 226 U.S.P.Q. 938, 941-42, 1985 WL 729090 (TTAB 1985). It is helpful if the TM symbol is used adjacent to the mark because this will increase the likelihood that the consumer will perceive the feature as a trademark.

Secondary Source

If an applicant can establish that a mark serves as an identified secondary source, it may register on the Principal Register. This can be proven by showing ownership of a U.S. registration on the Principal Register of the same mark for other goods or services, non-ornamental use of the same mark in commerce on other goods or services or ownership of a pending use-based application for the same trademark for other goods or services, used in a non-ornamental manner. An example of this would be a college or university who uses its name in connection with rendering services for education, and then applies at the USPTO to use the mark on the front of a sweatshirt. This would qualify as secondary source.

Evidence of Distinctiveness

If the proposed ornamental mark is not inherently distinctive, if it has become distinctive it can register on the Principal Register. However, evidence of five years’ use is not enough to show secondary meaning if the mark is mere ornamentation. In conjunction with five years of use, the applicant must be able to show significant advertising and promotion of the goods branded with the trademark. See In re Jockey International, Inc., 192 U.S.P.Q. 597, 1976 WL 21154 (TTAB 1976). The lawyers at our firm are very familiar with the persuasive arguments that must be submitted to the USPTO in order to register an ornamental mark that is also a source identifier. Please do not hesitate to contact our office with inquiries regarding ornamental trademarks or with general trademark inquiries.

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