Guest post by Taylor Josey, rising 3L at the University of Georgia School of Law
Is your trademark registrable or “merely ornamental”?
There are a number of factors that must be considered when deciding whether to register a trademark. For instance, one must do a search to see whether a similar registered trademark already exists, what the associated costs will be, and what class or classes in which you want to register your mark.
One often overlooked consideration is whether the mark you are seeking to register is actually registrable. An important requirement for trademark registration is that the mark is used in commerce to identify the good or service. Trademark law exists to allow consumers to differentiate between competing products, so the USPTO will reject a mark that does not help the consumer identify the source of the product.
“Merely Ornamental” Distinction
For this reason, applications for marks that are purely decorative or “merely ornamental” will be refused by the USPTO. Marks that serve no purpose other than to decorate the good cannot be trademarked because (arguably) consumers will decide to purchase the product based on the design of the mark itself, not what the design signifies (i.e., the brand or producer of the product). According to the USPTO, such purely decorative features “may include words, designs, slogans, or other trade dress.” For example, a floral pattern design on china is not a registrable trademark.
However, whether or not a mark is deemed “merely ornamental” can depend simply on how the mark is presented on the good. Consider the example of a t-shirt with large word or slogan across the front. That design will likely not be valid for registration because a consumer would potentially view the design as purely decorative and not representative of the shirt’s maker. However, if that same word or phrase is in smaller print on the breast or the tag, then that would likely indicate to the consumer that the design is designating the source.
The USPTO considers the “size, location, dominance, and significance of [a] mark as applied to the goods” as “factors used to determine whether [a] mark also functions as a trademark to identify the source of [the] goods or is merely ornamental.” Not all marks that appear to be purely decorative will be found to be “merely ornamental.” If a design has acquired secondary meaning, or in other words, the design has come to signify a particular brand in consumer’s minds, then it may be registrable – for example, a giant Ralph Lauren Polo horse on a shirt. This slideshow might help you get a better idea of what kinds of marks will be deemed “merely ornamental.”
Why You Need to Consider This Before Filing
First of all, filing for a trademark costs money. If your application is rejected, then you may lose your filing fee or face additional expenses in refiling or correcting your application. If your application is rejected initially, you may have to submit a “substitute specimen,” which is a piece of informational material referring to the goods being filed for that shows proper use the mark.
These materials must have been used in commerce at the time of the application or you must amend this date to match the substitute specimen. Such materials commonly include, according to the USPTO, “tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.” It would be good idea to submit this type of material featuring the mark in the first place to avoid having to resubmit.
Otherwise, you may need to show that your mark has acquired distinctiveness, meaning that consumers already associate the mark with your brand. This is a difficult burden to overcome and the analysis necessary to show secondary meaning can be costly. Secondary meaning is not required if your mark clearly identifies the source and does not conflict with someone else’s mark. Therefore, considering the issues above before filing your application will save time and money in the application process while also helping you ensure that your mark receives protection.
As you can see, there are many factors to consider before attempting to register your trademark. Another potentially helpful article on trademark law and the registration process can be found here. If you have any questions on registering for a trademark, then please contact us for guidance.