Ornamental Use: What It Is and Why It Matters for Trademarks

If you are thinking of registering a trademark for your business, you may have heard of the term “ornamental use”. But what does it mean and how does it affect your trademark protection? In this blog, we will explain what ornamental use is, how to avoid it, and how to overcome an ornamental refusal from the USPTO.

a woman and a man both wearing white t-shirts that say "force majeure" on the center of them

If you are thinking of registering a trademark for your business, you may have heard of the term “ornamental use”. But what does it mean and how does it affect your trademark protection? In this blog, we will explain what ornamental use is, how to avoid it, and how to overcome an ornamental refusal from the USPTO.

What is ornamental use?

Ornamental use is when a trademark is used not to identify the source of the goods or services, but rather to decorate or enhance the products by the inclusion of the mark. For example, if you put a slogan or a logo on the front of a t-shirt, hat, or bag, that may be considered ornamental use, because it does not clearly tell the consumer who made or sold the product. Instead, it is just part of the product itself.

Why is ornamental use a problem?

Ornamental use is a problem because it does not qualify as proper trademark use. The purpose of a trademark is to indicate the origin of the goods or services, or to tell the consumer where the products come from. This is also known as the source-identifying function of a trademark. A trademark that is merely ornamental does not perform this function and does not distinguish your products from those of others.

If you apply for a trademark registration and submit a specimen (a sample of how you use your mark) that shows ornamental use, the USPTO will likely issue an ornamental refusal and reject your application. This means that you will not be able to register your trademark and enjoy the benefits of federal trademark protection, such as nationwide exclusivity, presumption of validity, and the right to sue for infringement.

How to avoid ornamental use?

The best way to avoid ornamental use is to make sure that your trademark is used in a way that clearly identifies the source of your goods or services and distinguishes them from those of others. This means that your trademark should be placed in a prominent and conspicuous location on your products or packaging, such as on a tag, label, hangtag, or collar. It should also be relatively small and discreet compared to the rest of the product.

For example, if you want to register a trademark for clothing, you can put your mark on a tag on the outside or inside of the garment, or on a small logo on the pocket or breast portion of the shirt. These are common ways that consumers recognize clothing brands and associate them with quality and reputation.

How to overcome an ornamental refusal?

If you receive an ornamental refusal from the USPTO, do not panic. There are ways to overcome this refusal and register your trademark. Here are some possible options:

  • Submit a substitute specimen that shows proper trademark use. You can do this if you have already used your mark in commerce in a non-ornamental way before or at the time of filing your application.

  • Amend your application to seek registration on the Supplemental Register instead of the Principal Register. The Supplemental Register is a secondary register for marks that are not yet distinctive enough to qualify for the Principal Register. Registration on the Supplemental Register still provides some benefits, such as the right to use the ® symbol and to prevent others from registering confusingly similar marks.

  • Amend your application to seek registration under Section 2(f) based on acquired distinctiveness. This means that you can show that your mark has become distinctive through extensive and exclusive use in commerce for at least five years. This option is only available if you applied for registration based on actual use in commerce, not based on intent-to-use.

  • File a new application based on intent-to-use and submit a proper specimen when you file your statement of use. This option may be suitable if you have not yet used your mark in commerce or if you plan to change how you use your mark in the future.

Conclusion

Ornamental use is one of the common pitfalls that trademark applicants face when registering their marks. To avoid this issue, it is important to understand what ornamental use is and how to use your mark in a way that clearly identifies the source of your goods or services. If you receive an ornamental refusal from the USPTO, you may still have options to overcome it and register your mark.

However, navigating the trademark process can be complex and challenging, especially if you encounter refusals or objections from the USPTO. That is why it is advisable to consult with an experienced trademark attorney who can help you with your trademark application and protect your brand. If you need assistance with your trademark matters, please contact us today for a free consultation.