To overcome an ornamental refusal, you may submit evidence of the use of your mark on goods or in connection with services other than those you listed in your application. This is considered an indicator of secondary source. Typically, this option is applicable if your application is for goods that are supplementary to other more primary goods and/or services that you provide.
For example, a university may apply to register its university logo for t-shirts that it sells printed with the logo. Selling t-shirts is supplementary to the university’s primary function of providing educational services. If the university receives an ornamental refusal when submitting a picture of a t-shirt with the university logo across its front, the university may submit evidence that it provides educational services under the same mark (such as a prior registration) to overcome the ornamental refusal.
For more information on secondary source, see TMEP §1202.03(c).
TEAS instructions for submitting evidence of use of mark as an indicator of secondary source:
To respond to a nonfinal office action, use the Response to Office Action form.
To respond to a final office action, use the Request for Reconsideration after Final Action form. The instructions provided in both forms are the same. If you need technical assistance with TEAS, contact TEAS@uspto.gov.
Once you have opened the appropriate TEAS form:
- Answer "Yes" to form wizard question #1.
- On the next portion of the form, use the first "Click here" button to enter an argument as to why the mark is an indicator of secondary source.
- Use the second "Click here" button to attach JPG/PDF image files of relevant evidence to support your argument. The size of your attachment may not exceed 5 megabytes per file.
- Click the “Submit” button