Ornamental Trademark Use and Class 25 Clothing Brands
There is a current market trend for clothing trademarks to live in a gray zone between “design” and “brand.” That gray zone is where many business owners — especially restaurants, breweries, bars, entertainment companies, and beverage brands — are now getting into trouble. As collateral merch explodes in popularity, the United States Patent and Trademark Office (USPTO) is both refusing legitimate clothing brands under Section 2(d) (Likelihood of Confusion) and issuing trademark registrations for collateral apparel that is arguably ornamental use rather than true trademark use. This article takes a closer look at ornamental trademark use on clothing in International Class 25 and is written for business owners, brand operators, and entrepreneurs who want to build real clothing brands or use apparel to support their core business.
What Is “Ornamental Use” on Clothing?
In USPTO practice, a trademark is refused as “merely ornamental” when the specimen shows the matter being used as decoration, not as a source identifier. The key question under TMEP §1202.03 is whether the overall commercial impression is that of a brand, or simply of a decorative design or slogan.
The USPTO and Trademark Trial and Appeal Board (TTAB)look at factors such as:
McCarthy on Trademarks treats ornamental use as a special application of the basic question of whether consumers perceive something as a symbol of origin. If customers see a design only as decoration, there is no trademark. If they see it as decoration and as indicating a particular source — a “secondary source” — then it can function as a trademark. The issue is not a policy against attractive designs, but a question of public perception.
On clothing, this plays out most clearly in two kinds of TTAB decisions: those where large, front-and-center designs are held to be ornamental, and those where the same kind of display is allowed because consumers will recognize the underlying source (for example, universities or established brands).
TTAB Examples: What Counts as Ornamental on Apparel?
TTAB case law has given the USPTO a set of guideposts for ornamental use on clothing and related goods.
In In re Lululemon Athletica Canada Inc., the Board considered a single, simple wave line applied across the front of jackets and sweatshirts. The design was found to be merely ornamental, more like piping than a badge of origin, and therefore not registrable as a trademark for the clothing at issue.
More recently, in In re Dragonsteel Entertainment, LLC, the Board affirmed a refusal where a fantasy-inspired design dominated the front of T-shirts, hoodies, and socks. The design occupied the main visual “real estate” on the apparel and functioned as decoration rather than a trademark, particularly given evidence that such designs commonly appear on the front of shirts as ornamental features.
In failure-to-function cases, the Board has also focused on common phrases. In re Peace Love World Live, LLC, the mark “I LOVE YOU” for bracelets was refused because the phrase was perceived as a term of endearment, not as an indicator of a single source, especially in a marketplace full of jewelry bearing the same phrase. Similarly, in the TEAM JESUS decision involving clothing and religion-related services, the Board concluded that consumers would understand the phrase, emblazoned across the front of shirts, as a message about affiliation rather than a brand.
These cases underscore the core principle: even very prominent uses on apparel can fail as trademarks if buyers see them as decoration or messaging rather than as a badge of origin.
The “secondary source” Concept and Collateral Merchandise
Ornamental use is not always fatal. The USPTO recognizes that certain matter, even if decorative on the product, can still function as a trademark by indicating a secondary source — usually where the trademark is already known for other goods or services. TMEP §1202.03 and related guidance point to university T-shirts as the classic example.
When a shirt displays “NEW YORK UNIVERSITY” or a school crest across the front, consumers may see both ornament and indication that the university is the source or sponsor. The TTAB in In re Pro-Line Corp. explained that ornamentation on T-shirts can still function as a trademark where the matter tells the public the secondary source of the shirt (for example, a university or sports team).
USPTO guidance expressly notes that universities may register their trademarks for T-shirts because selling T-shirts is “supplementary” to their primary role of providing educational services. The shirts still signal that the university is behind them, even if the apparel is collateral.
This “secondary source” framework is exactly what many restaurants, breweries, bars, musical artists, and beverage companies are relying on — sometimes explicitly and sometimes unintentionally — when they apply to register their house trademark for clothing in Class 25.
The Merch Boom: Restaurants, Breweries, and Bands as “Clothing Brands”?
Over the last decade, there has been an explosion of collateral merchandise:
These businesses often file trademark applications that include Class 43 for restaurant services, Class 32 and 33 for beverages, and Class 25 for clothing. The clothing is typically positioned as a marketing extension of the core business, not as a standalone apparel brand in the way that Levi, Patagonia, or Vuori operate.
Industry rankings of leading apparel retailers and brands tend to be populated by clothing-focused companies, highlighting that consumers generally look to dedicated apparel brands — not restaurants and bars — as primary clothing sources. That marketplace reality matters when we talk about whether a restaurant or brewery is truly in the business of selling clothing brands, or simply offering collateral merch.
Yet, the USPTO frequently accepts these trademark applications so long as the specimens show use of the trademark on clothing and there is no clear ornamental-use objection. Once registered, those Class 25 registrations become ammunition in Section 2(d) trademark refusals against later-filed trademark applications by genuine clothing brands.
When Collateral Merch Blocks Real Clothing Brands
Here is the recurring pattern many brand owners are now experiencing:
A startup apparel brand applies to register a trademark in Class 25 for a line of clothing. The Examining Attorney refuses registration based on a prior registration for the same or a similar trademark owned by a restaurant, brewery, bar, musical act, or beverage company that also lists “T-shirts; hats; hoodies” in Class 25. The USPTO examining attorney then asserts that consumers commonly encounter restaurants or breweries that also sell clothing, and thus would believe that the goods come from a single source.
From the trademark applicant’s perspective, this is upside down. The trademark applicant is building a true clothing brand, with the trademark used in classic trademark locations (labels, hang tags, consistent small logo applications). The cited registrant, by contrast, may sell limited quantities of merch used primarily to advertise and promote its core services (e.g., food preparation, alcohol , music recording , and or beverage sales)— classic collateral use that is arguably ornamental in many real-world displays.
Complicating matters, ex parte practice (one side only) does not permit a direct attack on the validity of the cited registration. TMEP §1207.01(d)(iv) emphasizes that a trademark registration on the Principal Register is presumed valid, including its identification of goods, and that collateral attacks on that registration’s validity (for example, arguing that the use on clothing is ornamental and not trademark use) must be brought in a separate trademark opposition or cancellation proceeding before the TTAB.
The result is a somewhat harsh practical effect: collateral promotions by restaurants, bars, and entertainment brands not only build their own marketing, but can also block later clothing brands whose entire business is apparel.
The “Something More” Doctrine and Relatedness of Clothing to Restaurant and Entertainment Services
Federal Circuit and TTAB precedent has pushed back against automatic assumptions that different categories of goods and services are related simply because some businesses offer both. In In re Coors Brewing Co., the Federal Circuit rejected the USPTO’s conclusion that beer and restaurant services were related merely because a small percentage of restaurants also served as sources of beer. The court required “something more” than scattered examples to show that consumers would actually expect a single source for both.
Similarly, in In re St. Helena Hospital, the court held that when the relationship between services and goods is not obvious, the USPTO must bring meaningful evidence that consumers would view them as coming from a single source, not just theoretical overlap. The TTAB in In re Thor Tech likewise treated third-party registrations as having only limited weight on relatedness and required evidence rooted in marketplace reality.
These “something more” decisions dovetail with cases distinguishing true apparel brands from souvenir or collateral merchandise. In Michael Caruso & Co. v. Estefan Enterprises, courts recognized that concert or restaurant T-shirts may be understood by consumers as souvenirs or promotional items tied to entertainment or dining services, rather than as indications that the seller is a primary clothing brand.
Applying these principles, it is not enough for the USPTO to point to the fact that some restaurants, breweries, or music acts sell T-shirts and hats. The question is whether consumers reasonably expect restaurant operators as a class to be in the business of clothing brands in the same way that they expect apparel companies to be. For most local restaurants and bars, the answer is “no” — at least absent strong evidence to the contrary.
Ornamental Use Versus Brand-Origin Clothing: Why the Distinction Matters
The ornamental-use doctrine is intimately connected to this “something more” analysis.
If a restaurant’s name appears in large lettering across the front of a T-shirt with no traditional brand indicators (neck label, hang tag, multiple uses in marketing as a clothing line), it is easy to view that use as ornamental or as a souvenir tied to restaurant services. That is different from a clothing company that uses a trademark systematically as the core brand for a line of apparel and reinforces that identity through hang tags, woven labels, lookbooks, and retail distribution.
McCarthy’s discussion emphasizes that where ornamentation and trademark function coexist, size, placement, and context often carry the day. A distinctive logo placed in a consistent location on multiple garments, combined with non-ornamental uses elsewhere (tags, labels, packaging), will more readily be perceived as a trademark. Conversely, a phrase or design used only as a big decorative front print will, in borderline cases, be treated as ornamentation.
When the USPTO both: (1) Registers marks for collateral apparel that could fairly be characterized as ornamental, and (2) Treats those registrations as strong evidence that restaurant and beverage companies are “clothing brands,” it increases the risk that later clothing-brand applicants will face Section 2(d) refusals untethered from how consumers actually perceive these different business models.
Practical Guidance for Clothing Brands
For brand owners who truly want to build a clothing line, there are several practical steps — drawn from TMEP guidance and TTAB decisions — that can help show that your use is not merely ornamental and to push back against overbroad relatedness assumptions.
First, treat your trademark as a brand, not just a graphic. Use it in “trademark” locations — sewn-in neck labels, hang tags, inside waistbands, or small chest logos — and make sure your specimens show that. If you also use large decorative artwork on the front, consider separating that from the core word trademark or logo you are trying to register, so you can argue that the brand element still plays a source-identifying role even if the graphic is ornamental.
Second, align your identification of goods and your marketing with a clothing-brand story. If your business plan, website, and social media all present you as an apparel line — with multiple styles, sizes, seasonal drops, and independent retail or e-commerce channels — that evidence can support the argument that consumers understand your trademark as a clothing brand, not as a side hustle to unrelated services.
Third, when facing a Section 2(d) likelihood of confusion refusal based on a restaurant, bar, brewery, or entertainment registrant, consider submitting marketplace evidence that:
You can also rely on the “something more” line of cases (Coors, St. Helena, Thor Tech and their progeny) to argue that third-party registrations listing both restaurant services and clothing are insufficient, without stronger evidence, to show that consumers expect a single source for both restaurant services and a full-fledged clothing brand.
In some situations, a coexistence agreement or consent agreement with the cited registrant may also be appropriate, especially if the restaurant or brewery is only interested in local collateral merch and your clothing brand has distinct markets or channels of trade – although, at the end of the day, the USPTO is in the position of whether to accept such coexistence or consent agreement between the parties.
Practical Guidance for Restaurants, Breweries, and Entertainment Brands
For restaurant and beverage operators, the lesson is not “don’t file in Class 25.” Rather, it is to be intentional about how you use and protect your trademark on apparel.
If you want your apparel to be more than just souvenirs — for example, you are building a genuine apparel line around your restaurant, bar, brewery, or band (i.e., think Planet Hollywood) — you should aim to use your trademark in traditional trademark locations on the garments, along with the prominent graphic displays. Doing so strengthens an argument that your clothing uses are not merely ornamental and that you are, in fact, operating a clothing brand as a separate but related product line.
If your clothing is truly ancillary and promotional, recognize that registering in Class 25 may still be possible under a secondary-source theory, but that those registrations can have broader consequences — they may block later apparel brands with similar names. A thoughtful strategy, including possible limitations in identification of goods or coexistence agreements, can reduce friction for future brand owners while still giving you appropriate trademark protection.
Responses to Office Actions, TTAB Appeals and TBMP Considerations
If you receive a USPTO office action for a final ornamental-use refusal or 2(d) likelihood of confusion refusal and believe the Examining Attorney has overreached — for example, by stretching relatedness between restaurant services and clothing without adequate “something more” evidence, or by ignoring clear non-ornamental use on labels and tags — you can appeal to the Trademark Trial and Appeal Board. The TTAB’s procedures are governed by the Trademark Trial and Appeal Board Manual of Procedure (TBMP), which describes how ex parte appeals from trademark refusals should be handled and how evidentiary issues are treated.
In more extreme cases, where the real problem is the validity of a prior registration (for example, a Class 25 registration that appears to be based entirely on ornamental merch), a separate trademark cancellation proceeding may be required. That is a more involved strategic decision and typically warrants case-specific legal advice in which our law firm can assist.
Conclusion: Planning Around Ornamental Use in Class 25
The law of ornamental trademark use on clothing sits at the intersection of doctrine and marketplace reality. On paper, any business can register its trademark for apparel if the use functions as a trademark. In practice, the USPTO’s growing tendency to treat restaurants, breweries, bars, entertainment services, and beverage companies as de facto clothing brands — based largely on collateral merch — can crowd the register and make life harder for true apparel startups.
For business owners and entrepreneurs, the path forward is to be deliberate: use your trademark in a way that clearly signals brand origin, gather real marketplace evidence of how consumers perceive your clothing, and be prepared to challenge broad assumptions about relatedness when a collateral merch registration stands between you and registration. With planning, you can avoid the ornamental-use trap and build a stronger, more defensible Class 25 clothing brand.