What’s Ornamental Use and How to Overcome It

Written By James Slater

Are you thinking of putting your branding on t-shirts or hats? How and where you use your branding on your products will impact your ability to register with the U.S. Patent and Trademark Office (USPTO).

What is ornamental use of a trademark?

The USPTO will refuse an application as ornamental if the specimen shows that the use of the mark is only decorative or ornamental. This means the trademark does not clearly identify the source of the applicant’s goods and distinguish them from the goods of others.

Examples of ornamental use of a mark

  • A quote or logo prominently displayed across the front of a t-shirt;

  • A logo on the front of a hat;

  • Stitching designs on the back pocket of a pair of jeans; or

  • Everyday expressions and symbols that commonly adorn products.

In these cases, most purchasers would perceive the logo, quote, or symbols as a decoration, not an identifier of the source of the t-shirt, hats, or clothing.

Proper non-ornamental use of a mark

There is no definitive place to affix your mark to your goods to avoid an ornamental refusal. However, the location, size and dominance of a mark will have a big impact on how the public perceives it.

The below image of a sweatshirt illustrates how purchasers commonly perceive logos as source indicators of a brand or manufacturer (trademarks) versus decorative illustrations (potentially copyrighted works):

Here, a purchaser would typically associate a small logo on a shirt pocket or breast area, sleeves, or neck tag with the source or manufacturer of the shirt. That is a trademark use of the logo.

On the other hand, a large logo or picture in the center of a shirt or hat is decorative and arguably could be entitled to copyright, but likely not trademark protection. There are of course some asterisks here.

If your logo or design is prominently featured in the center of your shirts or hats, then you likely will receive an Office Action from the USPTO with an ornamental refusal. Those initial refusals can oftentimes be overcome resulting in successful registration.

Overcoming an ornamental refusal

There are several options for overcoming an ornamental refusal. If applicable, a trademark applicant may be able to:

  • Submit a verified substitute specimen;

  • Amend the application from the Principal to the Supplemental Register;

  • Submit evidence that the mark has acquired distinctiveness;

  • Submit evidence of use of the mark to establish a secondary source for the applicant’s goods (proof that the mark is already recognized as a source; indicator for other goods or services that applicant sells/offers); or

  • Amend the application filing basis to intent to use.

Some options may be more viable than others depending on your specific circumstances. For instance, a substitute specimen may be submitted to overcome an ornamental refusal, but only if that specimen was in use in commerce depicting the trademark on the product on or before the application filing date. That means if you applied and then changed the location of the logo on your t-shirt, those specimens would be rejected. In that case you might have to consider whether to amend to the Supplemental Register, convert your application, and/or raise arguments in support of registration on the Principal Register, such as acquired distinctiveness.

You should speak with experienced trademark counsel to determine which options make the most sense for you.

What’s the difference between the Principal Register and Supplemental Register?

The USPTO registers trademarks on two different registers: the Principal Register and the Supplemental Register. The Supplemental Register does not afford all the benefits of registration on the Principal Register, but it does provide these significant advantages to the registrant:

  1. Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services;

  2. Inclusion of the registered mark in the USPTO’s database of registered and pending marks;

  3. Use of the registration to bar the subsequent registration of confusingly similar marks in applications filed by third parties;

  4. Use of the registration as a basis to bring suit for trademark infringement in federal court; and

  5. Use of the registration as a filing basis for a trademark application for registration in certain foreign countries.

Trademarks registered on the Principal Register also have: the presumption of validity, ownership, and exclusive right to the trademark; the opportunity to become “incontestable”; and the ability to be registered with U.S. Customs and Border Protection to stop the importation of infringing goods.

Next steps?

When faced with an ornamental refusal, you should speak to experienced trademark counsel before responding to an Office Action.

James Slater