Under the Trademark Act, a “Subject matter that is merely a decorative feature does not identify and distinguish the applicant’s goods and, thus, does not function as a trademark. A decorative feature may include words, designs, slogans, or trade dress. This matter should be refused registration because it is merely ornamentation and, therefore, does not function as a trademark, as required by Sections §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127.
The USPTO “will generally refuse your application as ornamental if your specimen shows that the use of your mark is only decorative or ornamental. That is, when use of your mark does not clearly identify the source of your goods and distinguish them from the goods of others; which is required for proper trademark use.”
The following are factors that an Examining Attorney must consider in analyzing whether ornamental features function as a trademark:
The commercial impression of the proposed mark;
The relevant practices of the trade;
Secondary source, if applicable; and
Evidence of distinctiveness.
The typical example we have come across of ornamental trademarks are in the case the clothing industry, bumper stickers, and magnetic goods. For example, a quote prominently displayed across the front or back of a t-shirt or bumper sticker, a logo or mark used on the front of a hat/cap, a pattern on tableware or the use of everyday expressions on such items are often refused registration.
The significance of the proposed mark is a factor to consider when determining whether ornamental matter serves a trademark function. Common expressions and symbols (e.g., the peace symbol, “smiley face,” or the phrase “Have a Nice Day”) are normally not perceived as marks. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) (“The phrase “I LOVE YOU” conveys a term of endearment comprising the bracelet and, thus, it is ornamental. It does not identify and distinguish the source of the bracelet, especially where there is so much jewelry decorated with the term I LOVE YOU in the marketplace.”).
To overcome this type of rejection the most important thing to remember is that any words, designs, slogans, or trade dress used must be a “source identifier”, meaning the mark must be used in a way that identifies that those products and services are coming from you.
- Submit new specimens showing proper use of the mark: In the case of products: the mark must appear on the goods, the container for the goods, or displays associated with the goods. In the case of service marks, the specimens are typically advertising (such as in newspapers, flyers, brochures, banners, advertising, social media, websites, business cards, etc.) or other promotional materials showing use of the service mark.
- If the application was filed based on use, amend the application to seek registration in the Supplemental Registry.The Supplemental Register is an additional registry that exists for trademarks that do NOT meet the requirements under the Principal Register. For example, if the mark is descriptive, registration is allowed on the Supplemental Register if the mark has been continuous used in commerce.
- Submit evidence that the mark has acquired distinctiveness under Section 2(f) – available to any applicant who has received an ornamental refusal for any reason. Long-term use in commerce, advertising and sales figures, dealer and consumer statements, and/or other evidence can be used to show that consumers directly associate your mark with the source of those goods.
Examples of proper non-ornamental trademark use:
Discrete wording or design on the pocket or breast portion of a shirt. A purchaser would typically associate the small logo on a shirt pocket or breast area with the manufacturer or the source of the shirt.
A tag on the inside of a hat or garment. A purchaser would associate a logo on the tag with the maker of the garment.
Logo on a tag above the back pocket of a pair of jeans. A purchaser would typically associate this mark with the manufacturer of the jeans.
A small logo stamped on the back of a dinner plate or bottom of a coffee mug. Purchasers are accustomed to seeing a mark used in this location to identify the source of the tableware.
Examples of marks rejected due to failure to function for being ornamental:
- Opposition to registration of the mark for various clothing items, sustained and Cancellation of a registration (on the Supplemental Register) for the mark for backpacks, clothing, and stuffed toys, ordered on the ground that the marks fail to function as trademarks.
- Application for bearded skull design is merely a decorative feature of Applicant’s clothing and does not function as a source identifier.
- Registration of this mark was refused finding that it fails to function as a source indicator because it would be perceived as a merely ornamental use of the well-known Uncle Sam image.
- This mark for bumper stickers was also refused for same reasons “”merely an ornamental or informational feature”
I can help you navigate the intricacies of failure to function as ornamental in trademark law to secure and protect your intellectual property rights. I’d like to help you too by protecting your rights to trademarks, copyrights, and other intellectual property rights in the US and overseas.