"Ornamental" Refusal and How to Overcome This Refusal

What is an "Ornamental" Refusal?

An ornamental refusal is when the USPTO refuses registration of your mark because the sample of how you actually use the applied-for mark (the "specimen") or other information in the record shows use of your mark merely as an ornamental or decorative feature on the goods and not as a trademark to indicate the source of the goods. For example, a slogan prominently displayed on the front of a t-shirt may be considered merely ornamental use and not trademark use. That is, most purchasers of the t-shirts would not automatically think the slogan identified the source of the goods but would view the slogan only as a decoration on the goods.

For more information on an ornamental refusal, see Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; In re Olin Corp., 181 USPQ 182, 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.

Is Everything on the Front of a Clothing Item Merely Ornamental?

No. A small, neat, and discrete wording/design located on the pocket or breast portion of a garment (for example, a small design of an animal) may create the commercial impression of a trademark, whereas a larger depiction of the same wording/design prominently displayed across the front of a garment may be more likely to be seen as a purely decorative or ornamental feature of the goods. The size, location, dominance, and significance of your mark as applied to the goods are factors used to determine whether your mark functions as a trademark to identify the source of your goods or is merely ornamental. Although there is no definitive method or place to affix a mark to the goods, the location and size of a mark on the goods is part of the environment in which the public perceives the mark and may influence how the mark is perceived. Also, common expressions and symbols (for example, the peace symbol or the phrase "Have a Nice Day") are normally not the type of matter perceived as a trademark.

For more information regarding factors used to determine ornamentation, see In re Lululemon Athletica Can. Inc., 105 USPQ2d 1684, 1687 (TTAB 2013);  In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993); In re Dimitri's Inc., 9 USPQ2d 1666, 1667 (TTAB 1988); In re Astro-Gods Inc., 223 USPQ 621, 623 (TTAB 1984); and TMEP §1202.03(a).

How Can I Overcome This Refusal?

Below are possible response options for overcoming an ornamental refusal in an application based on Section 1(a).

Responding Online Using the Trademark Electronic Application System (TEAS):  Below are instructions for how to use TEAS to respond to such issue in an Office action.  The instructions below presume that you will be using a TEAS form to respond online to more than one issue.  To respond using TEAS, you must fill out the form to address all issues in the Office action and, at the end of the form, the correct party must properly sign it.  For more information about who may sign a response, please review your Office action.

To respond to this issue in a nonfinal Office action, use the TEAS "Response to Office Action" (ROA) online form.  To respond to this issue in a final Office action, use the TEAS "Request for Reconsideration after Final Action" form.  These forms will include the appropriate required statements and supporting declaration language referenced in the Office action.  The instructions provided in both forms are the same.  For technical assistance with these forms, contact TEAS@uspto.gov.

(1) Submitting a different verified specimen (a "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 trademark use in commerce of the same mark for the refused goods identified in the application, amendment to allege use, or statement of use.

A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application, prior to the filing of the amendment to allege use, or prior to the expiration of the filing deadline for a statement of use.” The USPTO will not accept your substitute specimen without this statement. If you follow the TEAS online form instructions below, this statement will be included in the form and the declaration supporting it will automatically be added in the “Declaration Signature” section above where you will sign the response form. In effect, the TEAS online form requires two signatures - one in the “Declaration Signature” section and one in the “Response Signature” section.

Note about dates of use: You may need to amend the dates of use if, based on the substitute specimen, the mark 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.

For more information on substitute specimens, see 37 C.F.R. §§2.59, 2.71(c) and TMEP §§ 904.03 et seq., 904.05.

TEAS online form instructions: To submit a substitute specimen, (1) answer "Yes" to form wizard question #2; and then, continuing on to the next portion of the form, under the heading "Classification and Listing of Goods/Services/Collective Membership Organization," do the following for each relevant class for which a specimen is being submitted: (2) check the box next to the following statement "Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration.  If not checked, the changes will be ignored."; (3) under "Specimen File," attach a jpg or pdf file of the substitute specimen by using the "Click here to Attach Specimen(s)" button; the size of each attachment may not exceed 5 megabytes; (4) describe what the specimen consists of; and (5) check the box next to the following statement (to ensure that the declaration language is inserted into the form): "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application" [for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use” [for an application based on Section 1(b) Intent-to-Use].

WARNING:  When a substitute specimen is submitted, the TEAS online form requires two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.  The declaration in the TEAS online form should not be bypassed.  Bypassing the submission of a declaration will result in refusal of the unverified specimen.

(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. §§1091, 1094; 37 C.F.R. §§2.47, 2.75(a); and TMEP §§801.02(b), 816.

TEAS online form instructions: To amend to the Supplemental Register, answer "Yes" to form wizard question #3 and then, continuing on to the next portion of the form, under “Additional Statement(s),” check the box next to "Supplemental Register" in the form.

(3) Submitting actual evidence that the applied-for mark has acquired distinctiveness under Section 2(f) in connection with your 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: Evidence of 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.

For more information on Section 2(f), see 37 C.F.R. §2.41(a) and TMEP §§1202.03(d), 1212.06 et seq.

TEAS online form instructions: To claim acquired distinctiveness, answer "Yes" to form wizard question #3 and then, continuing on to the next portion of the form, under “Additional Statement(s),” check the box for "§2(f), based on evidence." Use the "Click here" button to attach JPG/PDF image files of the §2(f) evidence.

(4) Submitting actual evidence of your use of the mark on goods or in connection with services that differ from the goods listed in the application to establish that your use is an indicator of secondary source for the 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 of that name in large lettering on the front of a t-shirt may not be considered acceptable trademark use, the university could provide a service mark registration for educational services in order to establish secondary source to overcome the refusal for the t-shirts.

For more information on secondary source, see TMEP §1202.03(c).

TEAS online form instructions: To provide evidence of secondary source, answer "Yes" to form wizard question #1. Then, continuing on to the next portion of the form, under “Argument(s), use the "Click here to Enter Argument(s)" button to enter an argument as to why the mark is an indicator of secondary source and, under “Evidence,” use the "Click here to Attach Evidence(s)" button to attach JPG/PDF image files of the relevant evidence.

(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. You may not, however, amend to an intent-to-use basis if you have filed a statement of use (SOU) after a notice of allowance issues; an SOU may not be withdrawn.

NOTE: If you amend to an intent-to-use basis or withdraw an AAU, registration may not be granted until you amend the application to claim use in commerce by filing an acceptable allegation of use (another AAU or SOU) with (1) a specimen that shows proper trademark use and (2) the required fee, currently $100 per class. If you submit the same specimen again, the trademark examining attorney will issue the same ornamental refusal.

For more information on amending the basis, see 15 U.S.C. §1051(b)-(d); 37 C.F.R. §§2.35(b), 2.76(f), 2.88(f); and TMEP §§806.03(c), 1104.11, 1109.17

TEAS online form instructions: To amend to Section 1(b), answer "Yes" to form wizard question #2, and then, continuing on to the next page in the form, under the heading "Classification and Listing of Goods/Services/Collective Membership Organization," do the following for each relevant class for which the basis is being amended:  (1) check the box next to the following statement: "Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of the renewal of a foreign registration.  If not checked, the changes will be ignored."; (2) next to "Filing Basis Section 1(a)" uncheck the box and delete the information appearing in the Date of First Use of Mark Anywhere and Date of First Use of Mark in Commerce textboxes; and (3) check the box next to "Filing Basis Section 1(b)."

WARNING:  When amending to Section 1(b), the TEAS online form requires two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.  The declaration in the TEAS online form should not be bypassed.  Bypassing the submission of a declaration will result in the amendment being unverified and not accepted.