TMIN News 18: Ornamental


Part 18 of Trademark Information Network Series

Published on Oct 10, 2017

This video introduces the concept of “ornamentation” and the “ornamental” refusal.  If you submit evidence that shows you only use your mark in an ornamental or decorative manner on your goods, we will refuse to register your mark. Learn how to overcome this refusal or avoid it altogether.


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TRADEMARK INFORMATION NETWORK
BREAKING NEWS

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MARK TRADEMAN, TMIN NEWS ANCHOR:
Did you receive an ornamental refusal from a USPTO examining attorney? Are you trying to register a design that decorates your t-shirts, jackets, or hats? A clever phrase that adorns your bumper stickers, buttons, or mugs? If so, stay tuned and you'll learn how to overcome that refusal and, in the future, avoid it all together.

The ornamental refusal is one of the most common refusals issued by the USPTO when examining trademark applications by t-shirt designers, silk-screen printers, and applicants trying to register decorative designs and memorable slogans. It means that the USPTO has refused your application and that your trademark will not register, unless you provide evidence showing why it should.

Before we talk about what evidence you might need, however, let's talk about what an ornamental refusal is and why you might receive one.

As you might recall from previous videos, the purpose of a trademark is to indicate the source of particular goods and services. You use a word, phrase, symbol, or design to indicate to consumers that they can rely on a particular level of quality when purchasing your specific goods or hiring you for specific services. If a word, phrase, symbol, or design does not do that, it's not a trademark. It's simply a word or phrase or pretty picture.

For example, the USPTO generally would consider both "Happy Birthday!" and a repeated balloon pattern on a plate to be ornamental use, not trademark use. A purchaser would understand neither the phrase nor the pattern to indicate the source of the goods, but, instead, would rather see the phrase and pattern as mere ornamentation or decoration.

See the difference? A trademark indicates source. A decorative design or phrase does not.

And that's the way to avoid or overcome an ornamental refusal: show the USPTO that your mark functions as a trademark.

How do you do that? Here are two ways.

One, submit an acceptable specimen. A specimen is evidence of how the public encounters your mark in the marketplace. It might be a label, a hangtag, or even a webpage, so long as the page includes the mark, a picture or textual description of the goods associated with the mark, and a means to order the goods.


For more information about specimens, be sure to watch the Specimens news broadcast, available on USPTO.gov/TMVideos.

The following are examples of specimens likely to trigger an ornamental refusal: the mark appearing as a slogan (such as "Have A Nice Day!") across the front of a shirt; the mark appearing in a large size across the front of the shirt; the mark wrapping around the shirt; and the mark appearing in a repeating pattern on the shirt.

Specimens showing the mark appearing in a traditional trademark location are best, such as a neat, discreet logo in the left breast area of the shirt. Therefore, you can avoid or overcome an ornamental refusal by submitting a specimen showing appropriate trademark use.

Another, less common, option is to submit evidence of secondary source. This means that you submit evidence you are already using the mark in connection with goods or services different from those listed in your application.

For example, a university that provides educational services might attempt to register its name for t-shirts. If the university submits a specimen showing the name (such as USPTO University) written in large letters across the front of the t-shirt, the Office would likely refuse the mark as ornamental.

To overcome the refusal, the university might show that it already uses the same trademark for its primary activity (here, educational services). The submitted evidence (such as a valid trademark registration) is known as "primary source" evidence. It establishes that any other use (such as use on a t-shirt) is related to its educational services and, thus, is an indicator of secondary source.

Remember, you can never establish secondary source without first showing there is an acceptable primary source, but once you establish both, you can avoid or overcome an ornamental refusal.

For more information about ornamentation, be sure to check out Section 1202.03 of the Trademark Manual of Examining Procedure. Also be sure to read the "Ornamental Refusal" page on USPTO.gov. The page contains lots of information about the refusal, as well as additional ways to overcome it.

If you have not yet filed your application and want to avoid the ornamental refusal altogether, you have several options.

You can make sure your specimen is an acceptable type before filing by educating yourself about proper specimens. In addition, you can include information about your primary services in the initial application, showing the USPTO that the specimen functions as secondary source.

And those are the basics. The Office issues an ornamental refusal when the mark on your specimen appears to be decorative. Overcome or avoid this issue by showing the USPTO how the mark indicates source.

Feel free to replay this video at any time and keep an eye out for more of these broadcasts throughout the website.

I'm Mark Trademan, Trademark Information Network.

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