"Ornamental" Refusal and How to Overcome This Refusal
- What Is an "Ornamental" Refusal?
- Is Everything on the Front of a Clothing Item Merely Ornamental?
- How Can I Overcome This Refusal?
What Is an "Ornamental" Refusal?
An ornamental refusal is when the USPTO refuses registration of your mark because the application record, such as the drawing and description of your mark, clearly indicate that your mark will be used 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. Another example is stitching designs on the back pocket of jeans, which purchasers are accustomed to seeing as merely ornamental or decorative, and would generally not view such a design as a trademark indicating the commercial source of the jeans.
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); In re Right-On Co., 87 USPQ2d 1152, 1153, 1156-57 (TTAB 2008) (design on back-pocket of jeans 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 Right-On Co., 87 USPQ2d 1152, 1156 (TTAB 2008); 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(b), 44, or 66(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” online 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. If you need technical assistance with TEAS, contact TEAS@uspto.gov.
(1) For Section 1(b), 44, or 66(a) applications, 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 or other evidence to show it provides 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, (1) answer "Yes" to form wizard question #1 regarding responding to a refusal; and then, continuing on to the next portion of the form, (2) 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; (3) under “Evidence,” use the "Click here to Attach Evidence" button to attach JPG/PDF image files of the relevant evidence; and (4) click the "Continue" button.
(2) For Section 44 applications, 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, (1) answer "Yes" to form wizard question #3 for submitting a Supplemental Register amendment, and then, continuing on to the next portion of the form, (2) in the “Additional Statement(s)” section, check the box next to "Supplemental Register" in the form; and (3) click the “Continue” button.
(3) For Section 44 or 66(a) applications, 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; and/or
(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 you 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 cannot support evidence of acquired distinctiveness in the United States.
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, (1) answer "Yes" to form wizard question #3 for submitting a Section 2(f) claim, and then, continuing on to the next portion of the form, (2) in the “Additional Statement(s)” section, check the box under “Indicate the Nature of the §2(f) Claim of Acquired Distinctiveness” for either “§2(f) Whole” or “§2(f) In Part;” (3) check the box next to “"§2(f) Claim of Acquired Distinctiveness, [IN PART,] based on Evidence;" (4) check the box next to the following statement: For “§2(f) Whole,” “The mark has become distinctive of the goods/services, as demonstrated by the attached evidence.” or for “§2(f) In Part,” “ For a trademark or service mark: “____ has become distinctive of the goods/services, as demonstrated by the attached evidence; (5) use the "Click here to Attach/Remove §2(f) Evidence" button to attach JPG/PDF image files of the §2(f) evidence; and (6) click the “Continue” button.