A Sections 1, 2, and 5 Ornamental Refusal is common. But, fortunately, one that is usually easy to overcome!
Let’s start with what an Ornamental Refusal is.
When you submit a specimen, your trademark might have been shown in a way that did not actually act as a trademark.
How does that happen?
Well, let’s remember that a trademark acts as a source-indicator of your goods and services. For instance, when you see this small Nike swoosh symbol on this pair of socks, you associate Nike as the source of these socks. As you can see, the symbol is put where trademarks are commonly put on socks.
When you receive an Ornamental Refusal, the USPTO is arguing that your applied-for mark is merely a decorative feature, and not acting as a source indicator.
Let’s use another example. When you see this t-shirt, you see the Polo symbol on the t-shirt, where trademarks commonly are seen.
For instance, if you google other t-shirts, you’ll see that many brands put their trademark in this area on the top right portion of the shirt. Here, it’s clear that Polo is a source indicator.
But, let’s use the example of this t-shirt. As you can see, the wording DON’T RUN TO ME is sprawled across the center of the entire t-shirt. When you see this wording, do you associate this as an actual source indicator? Does it tell you that a certain brand made this t-shirt?
No, the placement of the trademark just looks like a decoration, and isn’t really acting as an actual trademark.
There are a few ways to respond to this Refusal, but we’ll go through five common approaches.
The first option, which is very common, is providing a new specimen where the trademark on your goods and services is NOT ornamental.
So, with the t-shirt example, I’d then submit a new specimen with the trademark used in a non-ornamental way. For instance, I could submit a specimen with the trademark on the t-shirt shown in a non-ornamental way, like in the corner, and not spanned across the entire t-shirt. I could also show the trademark on the packaging of the t-shirt, like on a box. Or I could show the trademark on a tag connected to the t-shirt.
Google is your friend with figuring out examples of non-ornamental usage that is acceptable! For instance, let’s say I’m selling shirts and I got an ornamental refusal. If I’m not sure of an example of a non-ornamental usage, I’d search Google to see what is common in the industry for the placement of trademarks on the goods or services. Here, I see that Lacoste, Nautica, and Polo shirts all have an example of a trademark in a small area at the top right part of the shirt.
These shirts all act as a source indicator, and so if I had a similar example of my trademark on the top right portion of a t-shirt, this would likely be acceptable!
When you submit a new specimen that shows non-ornamental usage, remember that you still have to meet all the requirements for an acceptable Specimen. For a more detailed look at Specimen issues, you can look at the Specimen video in the Trademarks Classroom.
The remaining four options are much less common, but we’ll go through them!
The second option is much less common than the first option. Suppose you already have a registered trademark for the same trademark, or another pending application with the same trademark that shows an acceptable, non-ornamental specimen for other goods and services.
In other words, let’s say you’re currently applying for the trademark JONNEY TIM’S in Class 25, and received an Ornamental Refusal. But you also have a pending application for JONNEY TIM’S in Class 18 that shows an acceptable, non-ornamental Specimen. Or, you have a registered trademark JONNEY TIM’s in Class 14.
Well, in that case, you can overcome the Ornamental Refusal in Class 25 by saying you have “secondary source”. What this means is that even though you’ve shown an ornamental usage in Class 25, consumers will still view your trademark as a source-indicator because there are other examples of non-ornamental usage of your trademark with other goods and services.
So, to recap, if your trademark is already the same as a registered trademark you own, or if you have another application with the same trademark that is pending that shows an acceptable, non-ornamental specimen, then you can choose this as an option.
The third option is amending to the Supplemental Register. For information on the Supplemental Register and the protections it provides, review the Supplemental video in the Trademarks Classroom.
The fourth option is to amend your application to a 1(b) Intent to use basis instead of the current basis of 1(a), which means your goods or services are in commerce. However, if you do pursue this option, you will be required to provide an acceptable non-ornamental usage on a specimen at a later date.
Also, if you already submitted a “Statement of Use”, you unfortunately can no longer amend to a 1(b). In other words, let’s say you applied under a 1(b) basis, and your application was published, you received a Notice of Allowance, and then you submitted a “Statement of Use” at a later date. In that particular case, you can’t then amend your application back to a 1(b) basis.
The fifth option is to argue that your trademark has acquired distinctiveness under Section 2(f). This can be established in a variety of ways, including if you’ve used your trademark for a long time in commerce, such as over 5 years, have evidence of advertising, sales, and consumer statements, and evidence that shows that consumers associate the applied-for goods and services with your trademark. For additional information on the fifth option, you can also review the video on 2(f) Acquired Distinctiveness in the Trademarks Classroom.
Most people will likely have to choose the first option to overcome this Refusal.
