To avoid an ornamental refusal, consider the size, location, dominance, and significance of your trademark as used on your goods. These are factors that determine whether your trademark functions as a trademark that identifies the source of your goods or is merely ornamental.
- 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 label).
- 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. Another example is a large display of a logo on the front of a garment.
In re Lululemon Athletica Can. Inc., 105 USPQ2d 1684 (TTAB 2013)
- 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.
In re Right-On Co., Ltd, 87 USPQ2d 1152 (TTAB 2008)
- 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. In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987)
- 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.
- A trademark displayed prominently across the face of a shirt. Consumers are likely to view such use as merely decorative and indicating the wearer’s support for the band, musical festival, or album. Consumers would not view such use as indicating the source of goods.
For more information, see Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; and TMEP §§904.07(b), 1202.03 et seq.