Trademark Refusal On Basis of Ornamentation
The United States Patent and Trademark Office (USPTO) examining attorneys play a crucial role in determining whether a trademark can be registered. One common basis for refusal of registration is when the applied-for trademark is deemed to be merely a decorative feature of the goods or services, rather than a trademark or service mark. This is often referred to as “mere ornamentation”.
Here’s an overview of the circumstances under which this might occur:
Lack of Distinctiveness: For a trademark to be registrable, it must serve as a source identifier. This means it must distinguish the goods/services of one party from those of another. If the applied-for mark does not function as a source identifier and is merely a decorative feature, it is not likely to be registered. For instance, a floral design on a piece of clothing that is common and does not indicate the source of the goods could be deemed as mere ornamentation.
Common or Generic Designs and Phrases: If the applied-for mark consists of common or generic designs, patterns, or phrases that are typically used in decorating the goods or advertising the services, it may be refused as being merely ornamental. For example, the phrase “Just Do It” on a motivational poster may be considered ornamental and not registrable, as it does not uniquely identify the source of the goods.
Placement and Size: The location and size of the mark on the product can contribute to the impression that the mark is merely ornamental. For example, a large design or phrase occupying most of a t-shirt’s front side might be seen as a decorative feature rather than a brand identifier.
Consumer Perception: If consumers are likely to perceive the applied-for mark as an ornamental or decorative feature, rather than a brand identifier, the USPTO may refuse registration. Consumer perception is often evaluated based on evidence such as consumer surveys, dictionaries, newspapers, websites, or other publications.
Proper non-ornamental use of a trademark
The Trademark Manual of Examining Procedure (TMEP) provides guidance on the proper non-ornamental use of a trademark. In general, a trademark should function as a source identifier – it should indicate the origin of the goods or services and distinguish them from those of others.
Here are some guidelines and examples of proper non-ornamental trademark use:
Placement of the Trademark: A trademark is typically placed on the product or packaging in a way that it is noticeable and conveys to consumers that it is being used as a trademark, not as a decorative or ornamental feature. For instance, small and discreet use of the trademark on the pocket or breast area of a shirt, or on the tag or label, might be seen as proper trademark use.
Consistent Use: The trademark should be used consistently on all similar products or in connection with the provision of services. This helps to reinforce that the trademark is being used to identify the source, rather than for decorative purposes.
Prominent Display in Advertising: Proper non-ornamental use can also include prominent display of the mark in advertising materials, catalogs, or websites. For example, using the trademark in a consistent manner at the top of a webpage or on product brochures, where it is clear the mark is indicating the source of the goods or services.
Use on Business Documents: Using the trademark on business documents such as invoices, letterheads, and business cards can also signify a proper non-ornamental use of the mark.
Distinctiveness: The trademark should be distinctive and capable of distinguishing the goods or services of one provider from those of others. It should not merely describe the goods or services or any characteristics thereof.
Remember, a trademark’s primary function is to indicate the source of goods or services. This is a key factor that the USPTO examining attorneys will consider when evaluating whether a trademark is used ornamentally or as a proper trademark.
Overcoming An Ornamental Trademark Refusal
If the USPTO issues an ornamental refusal, suggesting that the trademark is merely a decorative or ornamental feature of the goods or services and therefore not registrable as a trademark, the applicant has several options to overcome this refusal. Here are a few options based on the guidelines provided by the USPTO:
Submit Evidence of Distinctiveness: The applicant can provide evidence showing that the mark has acquired distinctiveness, also known as secondary meaning, which indicates that consumers recognize the mark as a source identifier despite its ornamental nature. This may include a declaration detailing the length and extent of use of the mark, advertising expenditures, sales success, or consumer surveys.
Amend to the Supplemental Register: If the mark has been in use for less than five years, or if the applicant cannot prove acquired distinctiveness, the applicant can seek registration on the Supplemental Register. While this does not offer as broad of protection as the Principal Register, it allows the applicant to use the registered trademark symbol (®), and the mark can later be moved to the Principal Register once it has acquired distinctiveness.
Amend the Filing Basis to Intent-to-Use: If the application was based on use in commerce (Section 1(a)), the applicant can amend the application to an intent-to-use basis under Section 1(b). This allows the applicant more time to potentially show the USPTO that the mark is not merely ornamental through actual use in commerce that creates consumer recognition of the mark as a source identifier.
Submit a Substitute Specimen: If feasible, the applicant can submit a substitute specimen showing the same trademark used in a non-ornamental manner. For example, if the trademark was initially presented in a large, decorative manner on the front of a t-shirt, a substitute specimen might show the trademark used in a more subtle, trademark-appropriate manner, such as on a tag or label.
Contact Us
Navigating the complex world of trademarks can be challenging, and receiving an Office Action from the USPTO can be a daunting experience. Whether your application has been refused due to issues related to likelihood of confusion, descriptiveness, ornamentation, or any other reason, please know that you are not alone in this process. Our attorneys understand the intricacies of the USPTO’s examination process and have a successful track record in responding to Office Actions. We have helped numerous clients overcome refusals and secure their trademark registrations.
Please don’t hesitate to reach out to us to discuss how we can assist in responding to your Office Action and turn this hurdle into a step towards securing your trademark rights.
