My trademark is on a shirt, but the Trademark Office said that is merely ornamental and refused my application! What is ornamental use?

What is Ornamental Use?

Okay, so you have decided that you want to submit a trademark application to register your trademark. Before going through the process of filling out the application and paying the filing fees, it would be beneficial to make sure your intended trademark will qualify under the United States Patent and Trademark Office (USPTO) guidelines. In this post, we will go over one common reason why a trademark application would be refused registration – the ornamental use refusal.

What is ornamental use?

Let us start from the beginning. The purpose of a trademark is to identify the source of the goods, or to tell the consumer (you and I) where the goods come from. Boiled down, trademark law is actually all about the branding of the goods. If a trademark is used in a way that does not actually identify the source of the goods, or the brand of the goods, that use may be “merely ornamental” and the USPTO will refuse to register your application. So, in order to avoid an ornamental use refusal, it is imperative that you understand the distinctions between use that is “merely ornamental” and use that amounts to use as a trademark that actually identifies you as the source of the goods.

The ornamental refusal tends to occur frequently among Class 025 applications for apparel merchandise such as t-shirts, hats, and other clothing items but it can also apply to other classifications. If a design is “merely ornamental,” that means it is considered more decorative, and does not clearly tell the consumer the source of the goods (or the brand). Decorative or ornamental features often include words, designs, slogans, or trade dress (packaging design). So, in one instance a slogan, word or design can act as a trademark, and in another instance, it can be considered decorative. Common examples of a words, designs, slogans, or trade dress that is merely ornamental include an image or quote on the front of a clothing item, such as a shirt, hat, or bag, or embroidery embellishments, floral patterns, and everyday expressions or symbols on the surface of a product. Instead of indicating the origin of the product, these marks are really just decoration for the product, giving no indication where that product is from (the product’s brand).

Ornamental use example

If you are confused that is okay, let’s put it in context and consider an example. In an attempt to register the trademark “What’s Up LA,” you submit a sample of your product in your trademark application. The sample depicts a t-shirt with the slogan “What’s Up LA” written across the chest. The slogan is not found anywhere else on the t-shirt besides across the front chest. By looking at that t-shirt, would you have any idea of the source or brand of that product? Would you think that a t-shirt that had “What’s Up LA” was made by a brand called “What’s Up LA”? When you consider how many t-shirts have random slogans across the front, it is probably not likely that you would consider that to be something that identifies the brand. Instead, it is just a fun t-shirt with the phrase “What’s Up LA” written across the front. Therefore, how that trademark is actually used in the submitted sample does not sufficiently identify the source of the goods, or the origination of the t-shirt and would likely be refused registration based on the sample showing a use that is more decorative, or merely ornamental.

How do you overcome ornamental refusal?

Now that you have the idea of what is not a valid trademark we can discuss how to make sure you create a valid trademark and avoid an ornamental refusal. When determining whether your mark would be considered merely ornamental to the USPTO, it is helpful to consider how the average consumer would view the applied for trademark. Would the average consumer see the words or design as a way to identify the brand of the product? Or would a consumer think of the words or design simply serve as decoration or design on the goods?

Adjusting the way you use your trademark

Let us go back to our “What’s Up LA” example. Your application for trademark does not indicate the source of the goods and cannot be registered. Not to worry! All hope is not lost, and just because the mark might seem like more of a design than a source indicator does not mean it is impossible to register “What’s Up LA” as a trademark. Instead, in order to get your applied for trademark over that “merely ornamental” threshold, consider a new sample in your trademark application. The sample you provide in your trademark application as an example of your trademark in use should include tags, labels, or other indications in conjunction with your original design that would help to show the USPTO that consumers would perceive the mark as a source identifier rather than just a design. If you had “What’s Up LA” across the front of the chest, but also on the hangtag and shirt label, would you think that was actually the brand of the goods? Most likely. In addition, you should also consider factors such as the size, location, dominance, and significance of your trademark when you are creating your trademark sample! Factors such as these can make a huge impact in determining whether your trademark functions as identification of the source of your goods or is merely ornamental or decorative. Would an average consumer be more likely to consider “What’s Up LA” the brand of the shirt if it were not placed across the front of the shirt, but instead in small font on the breast pocket?  

Although there is no definitive method or place to affix a trademark to goods to create a valid trademark, the location and size of a mark on the goods is part of the overall environment in which the public perceives the mark and may influence how the mark is perceived. In short, an easy way to avoid an ornamental use refusal is to change where you put your trademark. Small, neat, discrete wording or design located on the pocket of a garment may create the impression of a brand identifier, whereas a larger depiction of the same wording or design prominently displayed across the front of a garment may more likely be considered a design choice. If you are still confused by this idea, consider a Ralph Lauren polo shirt. The horse embroidery on the breast pocket clearly identifies that the shirt is a Ralph Lauren product. However, would you, the consumer, automatically think a shirt with a picture of a horse on it to be a Ralph Lauren shirt if it was not a small design on the breast pocket? No. That is because the way and the placement of the trademark on a Ralph Lauren polo leads the consumer to believe that that mark indicates the brand.

Trademark distinctiveness

Okay, so we have discussed adjusting the way you use your trademark in order to overcome an ornamental refusal. But changing how you use your trademark on your product is not the only way to overcome such a refusal! Another way to overcome or avoid an ornamental refusal is by providing evidence that the trademark has acquired distinctiveness.

Evidence of distinctiveness typically includes proof of the applicant’s extensive use and promotion of the mark to demonstrate that consumers now directly associate the mark with the applicant as the source of the goods. In other words, the consumer automatically thinks of your brand when he or she sees that mark. For example, consider In-N-Out. The cups at In-N-Out are covered in a red palm tree pattern. Typically, in any other situation this type of pattern would just be considered ornamental, or just paper cups decorated with palm trees. The decoration doesn’t name the brand, it doesn’t clearly indicate that the cups are from In-N-Out. However, because In-N-Out has extensively used this distinct red palm tree pattern on all In-N-Out goods, consumers now automatically think of In-N-Out when seeing this pattern. Even though the palm trees decorating the cup would typically be considered a “merely ornamental” use of a mark, because the consumer now knows In-N-Out is associated with that that palm tree pattern, consumers can now clearly know that the paper cup is an In-N-Out cup. The red palm tree pattern has acquired the necessary distinctiveness to overcome any registration refusal. The red palm tree pattern acts as a source-identifier for In-N-Out products and is therefore distinctive enough to become a valid trademark.

Distinctiveness has been used to defeat many trademark ornamental refusals; however, it should be noted that this claim of distinctiveness will only be successful if such distinctiveness is accompanied by actual use in commerce. Therefore, this will not be sufficient for any intent-to-use applications. For example, in In re Lululemon Athletica Canada Inc., 105 USPQ2d 1684 (TTAB 2013) [precedential], Lululemon attempted to register a design mark “consist[ing] of a single line in a wave design that is applied to the front of a garment” for “hooded sweat shirts; jackets; coats.” You probably think of it as that U-shaped stitching on their clothing. The application contained a drawing of the mark, indicating the design would largely be displayed on the front of Lululemon jackets. The USPTO Examining Board found that Lululemon's wave design "is rather simple and look[ed] like piping." As such, the Board concluded the design was "likely to be perceived by the public as merely ornamental." The Board emphasized that acquired distinctiveness cannot be shown on a mark not yet used in commerce and since that product had not been sold in stores yet, it had not acquired the necessary distinction to make consumers automatically think the wave stitching indicated a Lululemon product.

However, since this initial refusal, Lululemon has grown exponentially in popularity thereby strengthening its argument for distinctiveness, and Lululemon has also changed its application strategy. Now, in applications for similar design marks, Lululemon has waited to submit applications until the design marks are actually being used in commerce. This delayed timing provides Lululemon with a basis for asserting acquired distinctiveness over the same trademarks that were initially determined by the USPTO to be ornamental.  This strategy has been largely successful for Lululemon and should be considered if you plan to submit an intent-to-use trademark application or have yet to actually sell your product in commerce.

Establish the specimen as a secondary source

Yet another way to overcome an ornamental refusal is to establish the trademark specimen as a “secondary source.” In the context of an ornamental refusal, "secondary source" simply means that the use of the design or words would be perceived by the consumer as an indicator of source due to the applicant's (you) prior use or registration of the trademark for other goods or services, different from the application you are submitting. Secondary source evidence can include other trademark applications or registrations for the same trademark for different goods/services or evidence of actual use of the mark on other goods/services. You are submitting an application for a trademark on a hat, and you have already registered that trademark on a mug. In making a secondary source argument, it is key that the applied-for trademark and the registered trademark are exactly the same. If the trademark that you are applying for is even the slightest bit different than the one you have already registered, you will not be successful in claiming the new trademark as a secondary source.

Secondary source example

Let us go through an example of a “secondary source.” In a trademark application for a mug with a design of a purple sun, the USPTO finds that the mug markings are merely ornamental, or just a decorative design. In response to this refusal, the applicant, Purple Sun Co., shows the Examining Attorney that the purple sun design on the mug has actually been used prior to this application on hats, t-shirts, sweatpants, shopping bags, gift cards and a plethora of other items. These prior uses of the trademark are sufficient to indicate that the consumer will know where the product (the mug) derives from, because it has been used on all of the other items. This evidence would then overcome the ornamental refusal.

As you can see, there are numerous ways to overcome an ornamental refusal for a trademark application. To avoid ornamental claims, trademark owners must ensure their trademarks act as source identifiers. In order to best protect your logos, designs and slogans, we recommend you consult a licensed trademark attorney to help you develop a comprehensive strategy to ensure maximum protection.