Ornamentation Refusals in Trademark Applications That Identify Clothing and Apparel
In 2007, local high school football powerhouse, Judson High School, was on track for its seventh Texas High School Football State Championship. The school adopted the motto “Seven in 07.” Similarly, in the last few San Antonio Spurs playoff runs, local t-shirt merchants sell t-shirts adorned with the phrase “Race for Seis!” Recall, the Spurs already have five NBA championships to their name.
Enterprising and caught up in the fanfare, entrepreneurs might want to cash-in on these popular phrases. One challenge they might encounter they might face is an ornamentation refusal if they file a trademark application with the USPTO.
As often discussed here, trademark applications can be rejected and challenged for several reasons. For example, a trademark examining attorney reviews each application for compliance with several statutes, regulations, and rules of the USPTO. One such issue that can arise is rejection due to the mark being merely ornamental. This rejection is especially common in trademark applications that identify clothing or apparel items.
The Role of Ornamentation in Trademarks
Before addressing ornamentation refusals, let’s define what ornamentation means in the context of trademarks. Ornamentation refers to decorative elements or designs that are added to a product or its packaging but do not serve as a source identifier. In other words, ornamentation is a non-distinctive feature that does not distinguish one brand from another.
Trademarks, on the other hand, are meant to function as source identifiers. They are distinctive words, symbols, etc. that help consumers identify the origin of goods or services. When a trademark is merely ornamental, it may fail to serve its primary purpose of indicating the source of goods or services.
Common Reasons for Ornamentation Refusals
Ornamentation refusals can be issued by the United States Patent and Trademark Office (USPTO) or other trademark authorities for various reasons. Here are some common reasons why trademark applications may face ornamentation refusals:
Failure to Function as a Trademark: To be registrable, a trademark must function as a source identifier. If the ornamentation is perceived as merely decorative and does not convey a brand or source message, it may fail to function as a trademark.
Aesthetic Functionality: If a particular design or element is essential to the product itself or affects its cost or quality, it may be considered aesthetically functional. In such cases, the USPTO may refuse registration, as granting exclusive rights would put competitors at a significant disadvantage.
Merely Informational: If the design or element provides only informational content and does not function as a trademark, it may face refusal. For example, a slogan or phrase that merely conveys information about the product or its qualities is not registrable (e.g., “Contains 0g sugar”).
Strategies for Overcoming Ornamentation Refusals
Returning to our scenarios that started this blog post (e.g., “Seven in 07” and “Race for Seis”), the USPTO will reject applications where the specimen (e.g., photograph showing the mark used with the goods/services) if the goods are t-shirts and the specimen is a photograph of a t-shirt with SEVEN IN 07 or RACE FOR SEIS in large text across the chest of the t-shirt. By contrast, the USPTO will regularly accept photographs of t-shirts with SEVEN IN 07 or RACE FOR SEIS positioned on the left breast, the sewing labels, hang tags, etc. These photographs are often accepted because consumers recognize them as source identifiers. See the photograph below. This photograph could be an acceptable specimen for the TEXAS EXES logo and GILDAN (or HEAVY BLEND) because they appear on the left breast, and sewing label, respectively.
Conclusion
Ornamentation refusals can pose challenges to trademark applicants, but they are not insurmountable. By understanding the role of ornamentation in trademark law, identifying potential issues early in the application process, and employing effective strategies for overcoming refusals, you can increase your chances of successfully registering your trademark.
Remember that seeking guidance from a qualified trademark attorney is a wise step when facing ornamentation refusals or any other trademark-related issues. With the right approach and legal support, you can navigate the intricate path of trademark registration and protect your brand effectively.
If you would like to discuss a trademark application with an experienced trademark attorney, schedule a consultation here.
