1202.03 Refusal on Basis of Ornamentation

Subject matter that is merely a decorative feature does not identify and distinguish the applicant’s goods and, thus, does not function as a trademark. A decorative feature may include words, designs, slogans, or trade dress. This matter should be refused registration because it is merely ornamentation and, therefore, does not function as a trademark, as required by §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127.

For a mark for services, if the applied-for matter would be perceived only as decoration or ornamentation when used in connection with the identified services, a refusal as nondistinctive trade dress must issue under Trademark Act §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127. See TMEP §§1202.02 and 1202.02(b)-1202.02(b)(ii) regarding trade dress and TMEP §§1301.02–1301.02(f) regarding matter that does not function as a service mark.

Matter that serves primarily as a source indicator, either inherently or as a result of acquired distinctiveness, and that is only incidentally ornamental or decorative, can be registered as a trademark. In re Paramount Pictures Corp., 213 USPQ 1111, 1114 (TTAB 1982).

With regard to registrability, ornamental matter may be categorized along a continuum ranging from ornamental matter that is registrable on the Principal Register, to purely ornamental matter that is incapable of trademark significance and unregistrable under any circumstances, as follows:

(1) Ornamental matter that serves as an identifier of a "secondary source" is registrable on the Principal Register. For example, ornamental matter on a T-shirt (e.g., the designation "NEW YORK UNIVERSITY") can convey to the purchasing public the "secondary source" of the T-shirt (rather than the manufacturing source). Thus, even where the T-shirt is distributed by a party other than that identified by the designation, sponsorship or authorization by the identified party is indicated. See TMEP §1202.03(c).
(2) Ornamental matter that is neither inherently distinctive nor a secondary source indicator may be registered on the Principal Register under §2(f), if the applicant establishes that the subject matter has acquired distinctiveness as a mark in relation to the goods. See TMEP §1202.03(d).
(3) Ornamental matter that is neither inherently distinctive nor an indicator of secondary source, and has not acquired distinctiveness, but is capable of attaining trademark significance, may be registered on the Supplemental Register in an application under §1 or §44 of the Trademark Act.
(4) Some matter is determined to be purely ornamental and, thus, incapable of trademark significance and unregistrable on either the Principal Register or the Supplemental Register. See TMEP §1202.03(a).

The examining attorney should consider the following factors to determine whether ornamental matter can be registered: (1) the commercial impression of the proposed mark; (2) the relevant practices of the trade; (3) secondary source, if applicable; and (4) evidence of distinctiveness. These factors are discussed in the following sections.

1202.03(a) Commercial Impression

The examining attorney must determine whether the overall commercial impression of the proposed mark is that of a trademark. Matter that is purely ornamental or decorative does not function as a trademark and is unregistrable on either the Principal Register or the Supplemental Register.

The significance of the proposed mark is a factor to consider when determining whether ornamental matter serves a trademark function. Common expressions and symbols (e.g., the peace symbol, "smiley face," or the phrase "Have a Nice Day") are normally not perceived as marks. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) ("The phrase 'I LOVE YOU' conveys a term of endearment comprising the bracelet and, thus, it is ornamental. It does 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.").

The examining attorney must also consider the size, location, and dominance of the proposed mark, as applied to the goods, to determine whether ornamental matter serves a trademark function. In re Hulting, 107 USPQ2d 1175, 1177-79 (TTAB 2013) ; In re Lululemon Athletica Can. Inc., 105 USPQ2d 1684, 1687 (TTAB 2013) (quoting In re Right-On Co., 87 USPQ2d 1152, 1156 (TTAB 2008)); In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988); In re Astro-Gods Inc., 223 USPQ 621, 623 (TTAB 1984). A small, neat, and discrete word or design feature (e.g., small design of animal over pocket or breast portion of shirt) may be likely to create the commercial impression of a trademark, whereas a larger rendition of the same matter emblazoned across the front of a garment (or a tote bag, or the like) may be perceived merely as a decorative or ornamental feature of the goods. However, a small, neat, and discrete word or design feature will not necessarily be perceived as a mark in all cases. Moreover, the size of the mark on clothing is only one consideration in determining the registrability of a mark. In re Lululemon Athletica Can. Inc., 105 USPQ2d at 1689.

1202.03(b) Practices of the Trade

In determining whether a proposed mark is inherently distinctive, factors to be considered include whether the subject matter is unique or unusual in a particular field, as opposed to a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods that would be viewed by the public as a dress or ornamentation for the goods. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403-04 (TTAB 2018) ("The ornamental nature of the proposed mark [I LOVE YOU] is corroborated by the third-party use of that phrase on bracelets and other jewelry demonstrating that consumers are accustomed to seeing similar, ornamental displays of I LOVE YOU on bracelets and other jewelry from different sources."); In re General Tire & Rubber Co., 404 F.2d 1396, 1398, 160 USPQ 415, 417 (C.C.P.A. 1969) (affirming the ornamentation refusal of a mark comprising three narrow white concentric rings of approximately equal width applied to the outer surface of a dark sidewall tire; mark was a refinement of the practice, which consumers were familiar with, of whitewalls as decoration on tires); In re Chung, Jeanne & Kim Co., 226 USPQ 938, 941-42 (TTAB 1985) (finding that stripe design applied to sides of sport shoes was mere refinement of the common and well-known form of ornamentation in the field of sports shoes).

Even if a proposed mark is not inherently distinctive, it may be registered on the Principal Register if it has become distinctive of the applicant’s goods in commerce. See TMEP §1202.03(d). The practices of the trade may be relevant in assessing the applicant’s burden of proving that the proposed mark has become distinctive. Typically, more evidence is required if the proposed mark is a type of ornamental matter used so frequently in the relevant industry that consumers would be less apt to discern a source-indicating significance from its use. See Anchor Hocking Glass Corp. v. Corning Glass Works, 162 USPQ 288, 292-99 (TTAB 1969) (extensive evidence of record supported that cornflower design was recognized as a trademark for coffee percolators, culinary vessels, and utensils). Cf. In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451, 1454 (TTAB 1987) (affirming refusal to register design of morning glories and leaves for tableware, the Board noting that the design "has not been shown to be other than another decorative pattern without trademark significance . . . .").

If the applicant cannot show that the proposed mark has acquired distinctiveness, the mark in an application under §1 or §44 of the Trademark Act may be registered on the Supplemental Register if it is capable of distinguishing the applicant’s goods or services. 15 U.S.C. §1091. The practices of the trade may be relevant in determining whether a proposed mark is capable of distinguishing the goods or services. If the practices of the trade suggest that certain matter performs the function of a trademark by signifying to purchasers and prospective purchasers the goods of a particular entity and distinguishing them from the goods of others, the matter is assumed to be capable of distinguishing the applicant’s goods and, therefore, may be registered on the Supplemental Register. See In re Todd Co., 290 F.2d 597, 599-600, 129 USPQ 408, 410 (C.C.P.A. 1961) (holding that repeating pattern of green lines, used to cover the entire back surface of safety paper products (e.g., checks), was registrable on the Supplemental Register for safety paper products, where the record showed that it had long been the practice in the industry to use distinctive overall surface designs to indicate origin of the products).

1202.03(c) "Secondary Source"

To show that a proposed mark that is used on the goods in a decorative or ornamental manner also serves a source-indicating function, the applicant may submit evidence that the proposed mark would be recognized as a mark through its use with goods or services other than those being refused as ornamental. To show secondary source, the applicant may show: (1) ownership of a U.S. registration on the Principal Register of the same mark for other goods or services based on use in commerce under §1 of the Trademark Act; (2) ownership of a U.S. registration on the Principal Register of the same mark for other goods or services based on a foreign registration under §44(e) or §66(a) of the Trademark Act for which an affidavit or declaration of use in commerce under §8 or §71 has been accepted; (3) non-ornamental use of the mark in commerce on other goods or services; or (4) ownership of a pending use-based application for the same mark, used in a non-ornamental manner, for other goods or services. Ownership of an intent-to-use application for which no allegation of use under §1(c) or §1(d) of the Trademark Act, 15 U.S.C. §§1051(c) or (d), has been filed is not sufficient to show secondary source. If the applicant establishes that the proposed mark serves as an identifier of secondary source, the matter is registrable on the Principal Register.

In In re Paramount Pictures Corp., 213 USPQ 1111, 1112 (TTAB 1982) , the Board held that MORK & MINDY was registrable for decals because the applicant had a television series of that name and had previously registered MORK & MINDY for various goods and services, and found that the primary significance of the term MORK & MINDY to a prospective purchaser of decals was to indicate the television series and the principal characters of the television series. The Board held that the case was controlled by its decision in In re Olin Corp., 181 USPQ 182 (TTAB 1973) (stylized "O" design registrable for T-shirts, where applicant had previously registered the "O" design for skis), in which that Board had stated:

It is a matter of common knowledge that T-shirts are "ornamented" with various insignia . . . or … various sayings such as "Swallow Your Leader." In that sense what is sought to be registered could be construed to be ornamental. If such ornamentation is without any meaning other than as mere ornamentation it is apparent that the ornamentation could not and would not serve as an indicia of source. Thus, to use our own example, "Swallow Your Leader" probably would not be considered as an indication of source.

Id. at 182.

In Paramount, the Board stated that "[t]he ‘ornamentation’ of a T-shirt can be of a special nature which is [sic] inherently tells the purchasing public the source of the T-shirt, not the source of manufacture but the secondary source." 213 USPQ at 1112. Applying the test set forth in Olin, the Board found that "the paired names ‘MORK & MINDY’, while certainly part of the ornamentation of the decal, also indicate source or origin in the proprietor of the Mork & Mindy television series in the same sense as the stylized ‘O’ in Olin." Id. at 1113. The Board noted that "while purchasers may be accustomed to seeing characters’ names and images as part of the ornamentation of decals, T-shirts and the like, they are also accustomed to seeing characters’ names and images used as trademarks to indicate source of origin." Id. at 1114.

See also In re Watkins Glen Int’l, Inc., 227 USPQ 727, 729 (TTAB 1985) (reversing the refusal and finding stylized checkered flag design registrable for patches and clothing items, where applicant had previously registered WATKINS GLEN and checkered flag design (with "WATKINS GLEN" disclaimed) for services); In re Expo ‘74, 189 USPQ 48, 50 (TTAB 1975) (reversing the refusal and holding EXPO ‘74 registrable for handkerchiefs and T-shirts, since applicant, organizer of the 1974 World’s Fair, had previously registered EXPO ‘74 for other goods and services).

A series of ornamental uses of the proposed mark on various items will not establish that the proposed mark functions as an indicator of secondary source; use as a trademark for the other goods or services must be shown. See In re Astro-Gods Inc., 223 USPQ 621 (TTAB 1984) (affirming the refusal to register ASTRO GODS and design for T-shirts, despite applicant’s ornamental use of the proposed mark on other goods and appearance of applicant’s trade name "Astro Gods Inc." on the T-shirt as part of a copyright notice).

1202.03(d) Evidence of Distinctiveness

As noted above, even if a proposed mark is not inherently distinctive, it may nevertheless be registered on the Principal Register under §2(f), 15 U.S.C. §1052(f), if it becomes distinctive of the applicant’s goods in commerce. See TMEP §§1212–1212.10 regarding acquired distinctiveness.

Generally, evidence of five years’ use alone is not sufficient to show acquired distinctiveness of a mark that is mere ornamentation. Concrete evidence that the proposed mark is perceived as a mark for the relevant goods or services is required to establish distinctiveness. See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985).

1202.03(e) Ornamentation with Respect to §1(b), §44, and §66(a) Applications

Generally, the issue of ornamentation is tied to the use of the proposed mark as evidenced by the specimen. Therefore, unless the ornamental nature of the mark is clearly apparent from the drawing and description of the mark, no ornamentation refusal will be issued in an intent-to-use application until the applicant has submitted specimen(s) of use with an allegation of use under §1(c) or §1(d) of the Trademark Act, 15 U.S.C. §§1051(c) or (d).

In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for the examining attorney to issue an ornamentation refusal where the proposed mark on its face, as shown on the drawing and described in the description, reflects a failure to function. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal in a §66(a) application for a mark comprising pocket-stitching design for clothing).

1202.03(f) Ornamentation: Case References

The following cases show the various ways in which ornamental matter was found not to function as a mark.

1202.03(f)(i) Slogans or Words Used on the Goods

Slogans or phrases used on items such as t-shirts and sweatshirts, jewelry, and ceramic plates have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating the source of the goods. See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) ("The phrase ‘I LOVE YOU’ conveys a term of endearment comprising the bracelet and, thus, it is ornamental. It does 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."); D.C. One Wholesaler, Inc. v. Chien , 120 USPQ2d 1710, 1716 (TTAB 2016) (finding that customers purchase products with the phrase I ♥ DC specifically because they are ornamented with the phrase in an informational manner and that, given the phrase’s "significance as an expression of enthusiasm, it does not create the commercial impression of a source indicator, even when displayed on a hangtag or label"); In re Hulting, 107 USPQ2d 1175, 1181 (TTAB 2013) (finding that proposed mark NO MORE RINOS! conveys a political slogan devoid of source-identifying significance); In re Pro-Line Corp., 28 USPQ2d 1141 (TTAB 1993) (BLACKER THE COLLEGE SWEETER THE KNOWLEDGE primarily ornamental slogan that is not likely to be perceived as source indicator); In re Dimitri’s Inc., 9 USPQ2d 1666 (TTAB 1988) (SUMO, as used in connection with stylized representations of sumo wrestlers on applicant’s T-shirts and baseball-style caps, serves merely as an ornamental feature of applicant's goods); In re Original Red Plate Co., 223 USPQ 836 (TTAB 1984) (YOU ARE SPECIAL TODAY for ceramic plates found to be without any source-indicating significance); In re Astro-Gods Inc., 223 USPQ 621, 624 (TTAB 1984) ("[T]he designation ‘ASTRO GODS’ and design is not likely to be perceived as anything other than part of the thematic whole of the ornamentation of applicant’s shirts."); Damn I’m Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981) (DAMN I’M GOOD, inscribed in large letters on bracelets and used on hang tags affixed to the goods, found to be without any source-indicating significance).

See also TMEP §1202.04 regarding informational matter.

1202.03(f)(ii) Designs Used on the Goods

See In re General Tire & Rubber Co., 404 F.2d 1396, 160 USPQ 415 (C.C.P.A. 1969) (three narrow white concentric rings of approximately equal width applied to the outer surface of a dark sidewall tire considered just a refinement of a general ornamental concept rather than a trademark); In re David Crystal, Inc., 296 F.2d 771, 132 USPQ 1 (C.C.P.A. 1961) (two parallel colored bands at the top of the sock, the upper band red, and the lower band blue, for men’s ribbed socks held merely ornamental absent convincing evidence that the purchasing public recognized the design as a trademark); In re Sunburst Prods., Inc.,51 USPQ2d 1843 (TTAB 1999) (combination of matching color of watch bezel and watch band and contrasting colors of watch case and watch bezel for sports watches found to be nothing more than a mere refinement of a common or basic color scheme for sports watches and, therefore, would not immediately be recognized or perceived as a source indicator); In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987) (floral pattern design of morning glories and leaves for tableware not distinctive and not shown to be other than decorative pattern without trademark significance).

1202.03(f)(iii) Trade Dress on the Containers for the Goods

See In re J. Kinderman & Sons Inc., 46 USPQ2d 1253 (TTAB 1998) (design of container for Christmas decorations that resembles a wrapped Christmas gift not inherently distinctive); In re F.C.F. Inc., 30 USPQ2d 1825 (TTAB 1994) (rose design used on cosmetics packaging is essentially ornamental or decorative background and does not function as mark); In re Petersen Mfg. Co., 2 USPQ2d 2032 (TTAB 1987) (design representing the rear panel of a container for hand tools held unregistrable as merely ornamental, notwithstanding §2(f) claim).

1202.03(g) Ornamentation Cases and Acquired Distinctiveness

In the following cases, subject matter sought to be registered was found to have acquired distinctiveness as a trademark: In re Jockey Int’l, Inc., 192 USPQ 579 (TTAB 1976) (inverted Y design used on underwear found to have acquired distinctiveness, where evidence showed extensive use on packaging and in advertising in a manner calculated to draw the attention of prospective purchasers to the design and for them to look at the design as a badge of origin); Anchor Hocking Glass Corp. v. Corning Glass Works, 162 USPQ 288 (TTAB 1969) (blue cornflower design for coffee percolators, culinary vessels, and utensils found to have acquired distinctiveness, where evidence showed extensive and prominent use of the design in advertising, use of the design on pins and aprons worn by sales promotion representatives in the course of their duties, and surveys and statements of purchasers indicating that they recognized the design as indicating origin in applicant).