The United States Patent & Trademark Office (USPTO) examining attorney will refuse registration of a trademark if the applied-for mark is merely a decorative feature of the products and/or services. Generally speaking, decorative matter is merely ornamentation and does not serve the function of identifying and distinguishing the applicant’s goods or services from those of others. A decorative feature may include words, designs, slogans, or trade dress. This does not mean that a symbol or design that is ornamental or decorative cannot serve as a trademark – they can. But if a word, symbol or design is “solely” or “merely” ornamental or decorative and does not also identify and distinguish the source of the goods and/or services, then the USPTO examining attorney will likely refuse registration on the Principal Register.
Trademarks That Are Ornamental or Decorative
To be a valid federal trademark, the words, symbol or design submitted to the USPTO for registration must function as a trademark with the goods and/or services applied-for – i.e., the trademark must identify and distinguish the source of the goods and/or services. If consumers perceive an applicant’s word, symbol or design mark solely and only as an attractive ornamentation, then the word, symbol or design mark does not function as a trademark. The “ornamental rule” requires that the average consumer view the proposed words, symbol or design as indicating the source of the goods and/or services and not simply as decoration.
Words and Designs on T-Shirts and Other Apparel
When words, symbols or designs are used on T-shirts, the examining attorney will take a highly fact intensive approach to determine whether the words, symbols or designs are solely decorative ornamentation or source indicators. In many instances a word, symbol or design (such as a logo) will be used on T-shirts, hoodies, jackets, etc…in such a way that the consuming public would perceive them as simply attractive decorations or conveying a message (i.e., Life is Good). If the examining attorney deems the words or design as decorations or simply conveying a message, the applied-for trademark will be refused for failure to function as a tradeamrk. Therefore, for apparel and clothing items, it is critical to be strategic with the word, symbol or design’s size and placement so that it functions as a trademark. Examples of ornamental use of a mark include the following:
A Slogan prominently displayed across the front of a shirt – Most consumers would perceive the slogan as decoration, and would not believe the slogan identifies the manufacturer of the shirt.
A logo on the front of a baseball hat – Most consumers would perceive the logo design as ornamentation to represent a sports team (for example) and not the manufacturer of the baseball hat.
Trademarks That Are Not Ornamental or Decorative
The USPTO has stated that there is no definitive place to affix a trademark on good or services to avoid an ornamental trademark refusal. Each case will be examined based on the particular facts. However, the location, size and dominance of an applied-for mark may have a big impact on how the public perceives the trademark.
Examples of proper non-ornamental trademark use:
Discrete words, symbol or design placed on the front pocket or breast portion of a shirt – A purchaser will typically associate a small logo on a shirt, hoodie, or jacket on the front pocket or breast area with the manufacturer/producer of the shirt.
A tag or label located on the inside neck collar of a shirt or inside of a hat – A purchaser will associate a word, symbol or design on the tag or label with the manufacturer/producer of the apparel item.
A word, symbol or design above the back pocket of a pair of pants/shorts or on the elastic band of underwear – A purchaser will typically associate a word, symbol or design located on the upper portion of the back pocket of a pair of pants/shorts or on the elastic band of a pair of underwear with the manufacturer/producer of the apparel item.
Overcoming an Ornamental Trademark Refusal
To successfully demonstrate that an applied-for word, symbol or design functions as a trademark, the applicant may introduce other evidence showing that the applied-for word, symbol or design in not ornamental or decorative. Accordingly, the applicant may also consider submitting the following types of evidence:
Advertising and marketing information.
Consumer behavior information.
Search-engine optimization data, website metadata, or other appropriate data from social media platforms.
Marketing campaign and sales information.
If the USPTO examining attorney determines that the applied-for mark is being used in an ornamental or decorative manner, the proposed trademark may still register if the applicant is able to show that it would be recognized as a mark through its use with goods or services other than those being refused as ornamental. In this situation, the applicant may point to a secondary source including:
Non-ornamental use of the trademark in commerce on other goods or services.
Ownership of another federal trademark registration issued by the USPTO of the same mark for other goods or services.
Ownership of a pending use-based application for the same mark, used in a non-ornamental manner, for other goods or services.
If the USPTO examining attorney determines that the applied-for mark is being used in an ornamental or decorative manner, the proposed trademark may still register if the applicant is able to show that, through extensive and long term use in the marketplace, the trademark has acquired distinctiveness (or secondary meaning). Evidence used to support a claim of acquired distinctiveness may be in the form of advertising and sales figures, dealer and consumer statements, and/or other evidence showing that consumers directly associate the trademark with the source of those goods and/or services applied-for.
A quick note on Intent to Use trademark application. By definition, an Intent to Use (ITU) trademark application implies that the proposed trademark has not yet been used in commerce. Without “actual use”, no acquired distinctiveness (secondary meaning) can be created. A claim of acquired distinctiveness, requires prior use (extensive and long) on the goods and/or services for which registration is sought.
Evidence that shows the proposed trademark has been exclusively and continuously used in the marketplace by an applicant for the five years preceding the date on which the claim of acquired distinctiveness of a mark is a possible basis for overcoming an ornamentation refusal. The five year rule, however, is a moving benchmark and the USPTO examining attorney is not required to accept this evidence as proof of acquired distinctiveness. The weight to be accorded five year usage evidence will vary widely depending on the trademark for which registration is sought. For example, if the words, symbol, or design is highly ornamental (or highly descriptive or mis-descriptive) of the goods and/or services, the examining attorney may still refuse registration on the basis that five years’ use alone will not be sufficient to establish acquired distinctiveness.
Overcoming an ornamental trademark refusal can be a challenge. However, by planning in advance and submitting the appropriate evidence, trademark applicants can successfully argue that the applied-for mark (whether it is a word, design, slogan, symbol or phrase) is a source indicator and not merely a decorative feature or ornamentation. Each of the factors—commercial impression, relevant practices of the trade, secondary source, and evidence of acquired distinctiveness—are important considerations. The more evidence you are able to demonstrate for each factor, the stronger your argument will be that the applied-for trademark at issue is not ornamental and rather, a source indicator.
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