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Welcome to our discussion on ornamental refusals, a common yet often misunderstood aspect of trademark law. Today, we’ll delve into what an ornamental refusal means, why they’re issued by United States Patent & Trademark Office (USPTO) examining attorneys, and crucially, how you can respond effectively if you’re faced with one.
Please note that this discussion is intended for informational purposes only and should not be considered a substitute for competent legal counsel. Trademark law is a complex and nuanced field, and each situation has its unique considerations and legal implications. We strongly advise consulting with one of our trademark attorneys to ensure that your specific needs and circumstances are professionally addressed and to navigate the intricacies of trademark law effectively.
What Is An Ornamental Refusal in Trademark Context?
Let’s start by demystifying what an ornamental trademark refusal is and the reasons behind receiving one. In the realm of trademark law, the fundamental purpose of a trademark is to distinguish the goods or services of one business from another. This distinction requires the trademark to have unique and distinctive features that make it easy for consumers to link the trademark with specific goods or services.
The term “ornamental refusal” refers to a situation where the USPTO rejects a trademark application. This rejection is grounded in the belief that the proposed trademark serves more as a decorative feature rather than as a unique identifier of the source of goods or services. Remember, a trademark, be it a word, phrase, symbol, or design, should signify the unique source of your specific goods or services and set them apart from others.
If your trademark is primarily used in a way that appears ornamental, decorative, or fails to indicate a source, the USPTO is likely to issue an ornamental refusal. Receiving this refusal means your application is denied and your trademark won’t be registered unless you provide convincing evidence to the contrary.
Ornamental Refusals Are Very Common
Since an ornamental refusal is among the most frequently issued rejections by USPTO examining attorneys, it’s crucial to understand how to overcome such a refusal and, ideally, avoid it altogether. Consider this scenario: you decide to print T-shirts featuring a surfboard print and the catchphrase, “Ride the Waves.” To a buyer, this phrase and design are likely to be perceived as aesthetic elements of the T-shirt rather than indicators of the product’s source. The distinction here is clear: a trademark indicates the source, whereas a decorative design or phrase does not.
What Evidence Is The Right Evidence?
So, how can you steer clear of or surmount an ornamental refusal? The key lies in demonstrating to the USPTO that your mark functions as a trademark. This involves submitting an acceptable specimen, which is evidence of how your trademark is perceived in the marketplace. This could be in the form of a label, a hangtag, or even a webpage, as long as it features the trademark alongside a description or image of the associated goods or services, and includes a way to purchase your goods or engage your services.
The best specimens are those that show the trademark in traditional trademark locations, like a logo on the front pocket or back of a shirt. By providing a specimen that demonstrates appropriate trademark use, you can effectively avoid or overcome an ornamental refusal.
Achieving Secondary Meaning or Acquired Distinctiveness
Another, less common approach, is to present evidence of secondary source use. This involves showing that you are already using the trademark in connection with different goods or services than those listed in your application. For instance, a well-established surfing lesson business attempting to register its name for t-shirts might face an ornamental refusal if the name is just emblazoned across the front of the shirt. To counter this, the business could demonstrate that it already uses the same trademark for its primary activity, like surfing lessons. Such evidence, including a valid trademark registration, acts as “primary source” proof, establishing any other usage as an indicator of secondary source.
Remember, establishing a secondary meaning is contingent on first demonstrating a valid primary source. Once you’ve done this, you can effectively avoid or overcome an ornamental refusal.
Strategies To Avoid Receiving An Ornamental Refusal
For those yet to file an application and looking to sidestep ornamental refusals from the get-go, there are proactive strategies. Ensuring your specimen is of an acceptable type before filing is essential. Additionally, incorporating information about your primary services in the initial application can demonstrate to the USPTO that your specimen functions as a secondary source indicator.
In summary, the USPTO’s aim is to preserve the integrity of trademarks as indicators of source. If your proposed trademark is refused on ornamental grounds, you’ll need to show that it’s used in a way that identifies the source or modify its presentation to meet the distinctiveness criteria for trademark registration.
Contact our Trademark Attorneys
Our team of trademark attorneys is ready to assist you with your federal trademark application to prevent ornamental refusals from the USPTO. We’re also here to help if you’ve already received one. Feel free to reach out to us by phone or email for assistance with all your trademark needs.
We hope this information has been beneficial to you. Thank you for engaging with us!
Are you launching a new company or developing a new brand or product and need to clear and/or register a trademark? Are you an online seller enrolling in a brand registry program? Are you looking for help with another federal trademark matter? We can assist! Please do not hesitate to give us a call or fill out our contact form. There is absolutely no charge to schedule an initial consultation with one of our trademark attorneys.
NexTrend Legal, LLC, a trademark law firm with offices in Charleston, South Carolina and Jacksonville, Florida. Our trademark attorneys provide federal trademark services to businesses of all sizes, new start-ups, franchisors, inventors, product developers, online sellers and entrepreneurs throughout the US and internationally. Our federal trademark services include, but are not limited to, trademark search, trademark registration, trademark monitoring, trademark office actions, trademark oppositions, trademark renewals and more.
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