"Ornamental" Refusal and How to Overcome This Refusal
What is an "Ornamental" Refusal?
An ornamental refusal is when the USPTO refuses registration of an applied-for mark because the sample of how the mark is used (the “specimen”) or other information in the record shows the mark appearing in an ornamental or decorative manner on applicant’s goods. For example, a repeated flower pattern on china is generally considered to be ornamental use, not trademark use. A purchaser of those goods would not understand that the flower pattern is intended to identify the applicant as the source of the goods, but rather would see that pattern only as an ornamentation or decoration on the goods, on packaging, or in advertising.
For more information, see Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451, 1454-55 (TTAB 1987) (holding an applied-for mark consisting of a floral pattern design of morning glories and leaves for tableware to be nondistinctive and merely a decorative pattern with no trademark significance); TMEP §§904.07(b), 1202.03 et seq.
How Can I Overcome This Refusal?
Below are possible response options for overcoming an ornamental refusal. WARNING: Response options (1), (2), and (5) are not appropriate for applications filed under Section 66(a) of the Trademark Act. Option (1) is also not appropriate for an application filed solely under Section 44.
NOTE: You should respond using the Trademark Electronic Application System (TEAS) “Response to Office action” (ROA) form (available at http://teasroa.uspto.gov/roa/), which automatically provides any required statement and supporting declaration language referenced in the Office action.
(1) Submitting a different specimen (a verified “substitute” specimen) that was in use in commerce at least as early as the filing date of the application (or prior to the filing of an amendment to allege use; or prior to the expiration of the deadline for filing a statement of use) and that shows proper non-ornamental use in commerce of the same mark for the refused goods identified in the application, amendment to allege use, or statement of use.
NOTE: You may have to amend the dates of use if the substitute specimen was in use in commerce on different dates than those in the application or amendment to allege use/statement of use.
Examples of the type of specimens normally acceptable for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages are also acceptable specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).
For more information on substitute specimens, see 37 C.F.R. §§2.59(a), 2.71(c); TMEP §§904.05,§904.03 et seq.
(2) Amending the application from the Principal Register to the Supplemental Register. The Supplemental Register is a second trademark register where trademarks can be registered that are not yet eligible for registration on the Principal Register, but may, over time, become a source indicator. Marks registered on the Supplemental Register, like those registered on the Principal Register, are protected against conflicting marks in later-filed USPTO applications. However, Supplemental Register registrations do not receive the same legal advantages and presumptions of Principal Register registrations.
For more information on the Supplemental Register, see 15 U.S.C. §1094; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.
(3) Submitting actual evidence that the applied-for mark has acquired distinctiveness under Section 2(f) in connection with applicant’s goods. In other words, because of the extensive use and promotion of the mark, consumers now directly associate the mark with the applicant as the source of those goods. Note: Long-term use alone is generally not sufficient to show acquired distinctiveness for marks that are merely ornamental.
Acceptable evidence of use and promotion can include:
(a) advertising and promotional materials that specifically show or promote the applied-for mark in use as a trademark and source-identifier;
(b) dollar figures for advertising devoted to such promotion;
(c) dealer and consumer statements indicating recognition of the applied-for mark as a trademark;
(d) other evidence that shows consumer recognition of the applied-for mark as a trademark for applicant’s goods.
NOTE: For applications filed under Section 44 or 66(a), when providing evidence of long-term use, an applicant may rely only on use in commerce that the U.S. Congress may regulate. Use solely in a foreign country or between two foreign countries never supports evidence of acquired distinctiveness in the United States.
For more information on Section 2(f), see 37 C.F.R. §2.41(a); TMEP §§1202.03(d), 1212.06 et seq.
(4) Submitting actual evidence of applicant’s use of the mark on goods or in connection with services that differ from the goods listed in the application to establish that applicant’s use is an indicator of secondary source for applicant’s goods. This evidence can include other trademark applications or registrations for the same mark for different goods/services or evidence of actual use of the mark on other goods/services. For example, a university that provides educational services could apply for its name on the front of t-shirts. While use on the front of a t-shirt may not be considered acceptable trademark use, the university could provide a service mark registration or other evidence to show that it provides educational services as evidence of secondary source for the t-shirts to overcome the refusal.
For more information on secondary source, see TMEP §1202.03(c).
(5) Amending your filing basis to intent to use under Section 1(b) to overcome the ornamentation refusal, if this refusal is based solely on the specimen of record. If you have filed an amendment to allege use (AAU), you may withdraw the AAU; the AAU fee will not be refunded. However, amending to an intent-to-use basis is not an option if you have filed a statement of use (SOU) after issuance of the notice of allowance. You may not withdraw an SOU. NOTE: If you amend to an intent-to-use basis or withdraw the AAU, registration may not be granted until you amend the application back to use in commerce under Section 1(a) by filing an acceptable allegation of use (another AAU or an SOU) with (1) a proper specimen that does not show ornamental use and (2) the required fee. If you submit the same specimen, the examining attorney will issue the same ornamental refusal again.
For more information on amending the basis, see 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §§806.03(c), 1103.