"Ornamental" Refusal and How to Overcome This Refusal

 

When does the USPTO issue an ornamental refusal?

We will generally refuse your application as ornamental if your specimen shows that the use of your mark is only decorative or ornamental. That is, when use of your mark does not clearly identify the source of your goods and distinguish them from the goods of others; which is required for proper trademark use.

Examples of ornamental use of a mark:

  • A quote prominently displayed across the front of a t-shirt, such as “The Pen is Mightier than the Sword.” Most purchasers would perceive the quote as a decoration, and would not think that it identifies the manufacturer of the t-shirts (the source of the t-shirts could be Hanes® or Champion®, for example, as shown by the neck-tag). 
  • A logo on the front of a hat. The logo is associated with an organization, like a sports team, which did not manufacture the hat.
  • Stitching designs on the back pocket of a pair of jeans. Purchasers are accustomed to seeing embellishments on jean pockets and would not think this embroidery design identifies the source of the jeans. 
  • A floral pattern on tableware or silverware. A purchaser would likely see this pattern as merely decorative and would not think it identifies the source of the tableware or silverware.
  • The phrase “Have a Nice Day” or a smiley face logo. Everyday expressions and symbols that commonly adorn products are normally not perceived as identifying the source of the goods.

For more information, see Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; In re Right-On Co., 87 USPQ2d 1152 (TTAB 2008) (back-pocket design on jeans was merely ornamental and did not show trademark use); In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987) (floral pattern design on dishes was merely ornamental and did not show trademark use); In re Olin Corp., 181 USPQ 182 (TTAB 1973) (phrase "Swallow Your Leader" on the front of a t-shirt was merely ornamental and did not show trademark use); and TMEP §§904.07(b), 1202.03 et seq.

 

Proper non-ornamental use of a mark

There is no definitive place to affix your mark to your goods to avoid an ornamental refusal. However, the location, size and dominance of a mark have a big impact on how the public perceives it.

Examples of proper non-ornamental trademark use:

  • Discrete wording or design on the pocket or breast portion of a shirt. A purchaser would typically associate the small logo on a shirt pocket or breast area with the manufacturer or the source of the shirt. 
  • A tag on the inside of a hat or garment. A purchaser would associate a logo on the tag with the maker of the garment.
  • Logo on a tag above the back pocket of a pair of jeans. A purchaser would typically associate this mark with the manufacturer of the jeans.
  •  A small logo stamped on the back of a dinner plate or bottom of a coffee mug. Purchasers are accustomed to seeing a mark used in this location to identify the source of the tableware.

 

Overcoming an ornamental refusal

How do I choose the best response option for my application?

There are five possible options for overcoming an ornamental refusal. Click the link for further information and instructions for responding through our Trademark Electronic Application System (TEAS). As noted below, some options may not be available for your specific application. You may, if applicable:

  1. Submit a verified substitute specimen – available to applicants filing under “use in commerce” basis. Submit a substitute specimen that demonstrates proper, non-ornamental use of your mark in commerce for your goods.
  2. Amend your application from the Principal to the Supplemental Register  – available to most* applicants. 
    Your mark will not receive all the same legal advantages as marks on the Principal Register, but it will be protected against conflicting marks in later-filed USPTO applications.
  3. Submit evidence that the mark has acquired distinctiveness under Section 2(f)  – available to any applicant who has received an ornamental refusal for any reason.
    Long-term use in commerce, advertising and sales figures, dealer and consumer statements, and/or other evidence can be used to show that consumers directly associate your mark with the source of those goods.
  4. Submit evidence of use of the mark to establish a secondary source for the applicant’s goods  – available to any applicant who has received an ornamental refusal for any reason.
    Submit evidence of use of your mark on goods or in connection with services that differ from the goods listed in your application.
  5. Amend your filing basis to intent to use under Section 1(b)  – available to most* applicants, provided that the applicant has not submitted a SOU. 
    Change your filing basis to “intent to use ” and provide a proper specimen later in the application process.

*Section 44 applicants  may only respond using option 2-5. Section 66 applicants  may only respond using option 3 or 4.


How do I review my Office action and submit my response?

Your Office action identifies one or more issues with your application, all of which must be addressed. It also includes information on who is authorized to sign your response. Make sure the correct party signs your response:

  • If you have an attorney, the attorney must sign the response. 
  • If you do not have an attorney, and you are an individual applicant, then you must sign (and date) the response yourself. 
  • If you are a juristic applicant (e.g., corporation, partnership), then someone with legal authority to bind the juristic applicant must sign (e.g., a corporate officer or general partner) and date the response. 
  • In the case of joint applicants, all joint applicants must sign the response.

Use the TEAS" Response to Office Action" (ROA) form to respond to a nonfinal Office action and the TEAS "Request for Reconsideration after Final Action" to respond to a final Office action. The instructions provided in both forms are the same. If you need technical assistance with TEAS, contact TEAS@uspto.gov.

NOTE: When submitting any signed document to the USPTO, the person filing the submission is certifying that the allegations and other factual contentions in that document have evidentiary support.

 

What are the next steps?

Processing time varies depending on your application and which option you choose to try to overcome the refusal, so continue to check TSDR   regularly to monitor your application’s status. Any additional Office actions that are issued will be posted in TSDR and sent to you based on your contact preferences. 

QUESTIONS?  For general information and assistance on the registration process and the status of your application, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For specific questions about your Office action, contact the examining attorney listed in your Office action directly.