What To Do If Your Trademark Is Refused For Ornamental Use

An ornamental refusal means that the USPTO has rejected your application because your trademark is used merely as a decoration or an ornament on your products, and not as a source identifier. 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.

An ornamental refusal can be frustrating and confusing, especially if you have invested time and money in creating and marketing your trademark. If this has happened to you, don’t lose hope; there are ways to overcome an ornamental refusal and register your trademark. In this blog, we will discuss some of the possible solutions that you can try.

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An ornamental refusal means that the USPTO has rejected your application because your trademark is used merely as a decoration or an ornament on your products, and not as a source identifier. 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.

An ornamental refusal can be frustrating and confusing, especially if you have invested time and money in creating and marketing your trademark. If this has happened to you, don’t lose hope; there are ways to overcome an ornamental refusal and register your trademark. In this blog, we will discuss some of the possible solutions that you can try.

Submit a different specimen that shows proper trademark use.

One of the easiest ways to overcome an ornamental refusal is to submit a new specimen (a sample of how you use your mark) that shows proper trademark use. 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.

It is important to note that you can only submit a different specimen if you have already used your mark in commerce in a non-ornamental way before or at the time of filing your application or statement of use. If you have not yet used your mark in commerce or if you plan to change how you use your mark in the future, you may need to try other options.

Amend your application to the Supplemental Register.

Another option to overcome an ornamental refusal is to amend your application from the Principal Register to the Supplemental Register. The Principal Register is the main register for trademarks that are distinctive and capable of identifying the source of the goods or services. The Supplemental Register is a secondary register for trademarks 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. However, it does not provide all the advantages of registration on the Principal Register, such as nationwide exclusivity, presumption of validity, and the right to sue for infringement.

You can amend your application to the Supplemental Register if your mark is capable of becoming distinctive through use in commerce over time. This option is only available if you applied for registration based on actual use in commerce, not based on intent-to-use.

Submit evidence of acquired distinctiveness.

A third option to overcome an ornamental refusal is to submit evidence of 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 also known as seeking registration under Section 2(f) of the Trademark Act.

Acquired distinctiveness means that your mark has acquired secondary meaning in the minds of consumers. That is, consumers have come to recognize your mark as a source identifier for your goods or services, even if it was originally ornamental or descriptive.

To prove acquired distinctiveness, you need to submit evidence such as sales figures, advertising expenditures, consumer surveys, unsolicited media coverage, declarations from industry experts, or any other relevant information that shows how consumers perceive your mark.

However, this option is not easy to achieve. You need to provide convincing and persuasive evidence that your mark has acquired distinctiveness for all the goods or services listed in your application. You also need to show that your mark has been used continuously and substantially in commerce for at least five years prior to the filing date of your application.

Submit evidence of secondary source.

A fourth option to overcome an ornamental refusal is to submit evidence of secondary source. This means that you can show that your mark is used not only as a decoration or an ornament on your products, but also as an indicator of another source of your goods or services. This option is also known as seeking registration under Section 2(a) of the Trademark Act.

Secondary source means that your mark is used in another way that indicates the source of your goods or services, besides the ornamental use on the products you applied for. For example, if a book publisher applies to register their trademark for t-shirts, they may show that they also use their trademark for publishing books, which is their primary business. In this case, the book publishing is the secondary source of the trademark, and the t-shirts are supplementary to their main goods and services.

To prove secondary source, you need to submit evidence such as prior registrations of the same mark for different goods or services (owned by the applicant), non-ornamental use of the mark on other goods or services (owned by the applicant), or ownership of a pending use-based application for the same mark used in a non-ornamental manner (owned by the applicant).

Conclusion

An ornamental refusal is one of the challenges that trademark applicants can come across during the registration process, but it’s not an insurmountable obstacle. There are ways to overcome an ornamental refusal and register your trademark. The key is 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. You also need to be aware of the possible solutions that you can try and the evidence that you need to provide.

While the trademark process looks straightforward at first blush, it can be much more difficult than it seems—especially when the USPTO issues an office action. It is highly recommended that you work with a trademark attorney to help give you the best chance of securing and protecting your trademark. Contact us to learn more or if you need help with your trademarks.