Trademark Ornamental Refusals – What to Consider
Sometimes, the USPTO will issue eccentric and unusual refusals to a trademark application. One such refusal is called an ornamental refusal. If you receive a trademark ornamental refusals, it means your registration of your applied-for mark has been refused because your mark is essentially merely decorative. That is, 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.
In some situations, a mark can still be registered even if it is used in an ornamental or decorative manner. In such cases, the mark must indicate secondary source. This means that although the mark is used in an ornamental or decorative manner on the applied-for goods, the mark would still be recognized as a trademark because it functions as a trademark for goods or services that are not the subject of the application. In other words, the mark is already recognized as a source indicator for other goods or services that you or the applicant sells or offers. For example, if “Angels Baseball” is written in large text across a sweatshirt, this use is ornamental; however, this mark will be eligible for federal registration with the USPTO because it indicates secondary source, namely the famous Anaheim-based baseball team.
Avoiding Trademark Ornamental Refusals – In order to establish that your use of the applied-for mark is an indicator of secondary source, you will have to submit actual evidence of your use of the mark on goods or in connection with services differing from the goods listed in the application. See TMEP 1202.03(c). In determining secondary source, the examining attorney will consider several factors – the significance, size, location, and dominance of the proposed mark. TMEP 1202.03(a). For example, large marks splayed across the front of a t-shirt will typically be deemed ornamental. In contrast, small, discrete marks on a pocket or breast portion of a shirt, such as Lacoste’s green crocodile, are usually perceived as a trademark.
Paramount Pictures Corp Case
An applicant can also submit evidence that the applied-for mark would be recognized as a mark through its use with goods or services other than those being refused as ornamental in order to demonstrate that a mark used on goods in an arguably ornamental manner also serves a source-indicating function. TEMP 1202.03(C). For instance, in the case In re Paramount Pictures Corp., 213 USPQ 1111, the Board reversed a decision refusing registration of the mark “MORK & MINDY” for decals for t-shirts. This was the name of a television program and its principal characters. In making its decision, the Board noted that the pair named MORK and MINDY, while certainly part of the ornamentation of the decal, also indicate source or origin in the proprietor of the Mork & Mindy television series, of which the applicant had previously registered “MORK & MINDY” for various goods and services.
Another way of overcoming trademark ornamental refusals is to submit actual evidence that the applied-for mark has acquired distinctiveness under Section 2(f) in connection with your goods. One thing to keep in mind is that common expressions and symbols are normally not perceived as marks. In In re Peace Love World Live, LLC, 127 USPQ2d 1400, it was ruled that the phrase “I LOVE YOU” used on bracelets, conveys a term of endearment and therefore was ornamental. It did 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.
In providing evidence for distinctiveness, you are trying to show that because of the extensive use and promotion of the mark, consumers now directly associate the mark with the applicant as the source of those goods. The amount and character of evidence required to establish distinctiveness necessarily depends on the facts of each case and particularly on the nature of the subject matter sought to be registered. See TMEP 1202.04(b) and 1212 et seq.
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 that the mark must be used in a way that identifies that those products and services are coming from you. Of course, there are other routes not discussed to consider in overcoming an ornamental refusal from the USPTO. At Cartee, LC, we are familiar with such refusals. If you have questions as to whether your mark functions as a trademark, if it could be refused on grounds of ornamentation, or any issues related to the any of the above-mentioned, please do not hesitate to contact our office.
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Of course, this is a basic introduction of what rights a seller has in such circumstances. Your State may have additional nuances and hurdles for you to navigate. Obviously, it is important to thoroughly address the facts of your case with an attorney. At Cartee, LC, we have counseled businesses in both domestic and international disputes, in state and federal courts, and in arbitration. If your business faces the issues discussed above, we would be happy to assist. Call us at (714) 942-2225.
Pam Dawber photo attribution: Angela George
