If you have received a merely ornamental trademark refusal, you may be wondering what to do. This is a problem that occurs with some frequency at the United States Patent & Trademark Office (USPTO). Depending upon how you are using your mark, you may be able to overcome this refusal.
What Is A Merely Ornamental Trademark Refusal?
Trademarks help people to know the source of a good or service. Think of the world’s most popular brands: Apple, Honda, Google, Coca-Cola, McDonalds. Each of these helps buyers find the same product again. The trademark makes sure that consumers will not be confused when they seek to purchase from the same company again.
That means that some things do not perform the function of a trademark. For instance, if you have a shirt with a unique and creative pattern on it, that alone will likely not serve to let consumers know what brand the shirt comes from (unless, of course, the company has built trademark rights in a particular pattern/decoration/color). While many things have the potential to function as a trademark, not all things will.
The USPTO issues a merely ornamental trademark refusal when the specimen shows the applied-for trademark used solely as a decoration. We see this a lot with people wanting to start clothing lines. Maybe they have a saying that they find amusing and they put it on the front of a t-shirt. But if they don’t treat it as a brand, then they may not be able to get trademark rights in that saying.
For instance, a shirt that simply says “I’m Awesome” on the front, but not on the labels, the packaging or other marketing materials does not show that the phrase functioning as a trademark. A random person on the street would think that the phrase “I’m Awesome” is just an expression of how the wearer feels. They would not immediately think that there is an “I’m Awesome” clothing line out there.
Such use is merely ornamental.
It’s not bad to be merely ornamental. Unless you want a trademark.
How Do You Overcome A Merely Ornamental Trademark Refusal?
As a first move, consider if what you seek to register as a trademark will work as a trademark. Do you have a clever idea for a shirt? Great. Is that meant to be your brand name? If the answer is “no” and you are just trying to protect your clever idea, then you face a merely ornamental trademark refusal.
As a second move, think carefully about the specimen that you submit to the USPTO with your trademark application. The specimen must show the trademark used as a brand. You can show labels, website, packaging or other marketing materials. Anything to show that consumers would recognize your trademark as a brand.
If you have already received a merely ornamental refusal for your trademark application, it might be a good idea to speak with an attorney to understand your options.
