Is your trademark actually a trademark, or mere ornamentation?

04.10.2012

Many people believe they have a trademark when in fact their design, phrase or combination is really not functioning as a trademark. Attorneys that work with clients seeking protection and registration of trademarks are often faced with the difficult task of determining whether or not a client is using their proposed mark in a manner that constitutes “trademark use” as required by §§1, 2, and 45 of the Trademark Act. According to the Trademark Act, use of a trademark must be use “in commerce” which is bona fide and ordinary in the course of trade for the goods or services associated with the mark. It is often the case that a client is seeking trademark protection for a design or slogan as used on an article of clothing, and such use of a proposed mark must be evaluated to determine if the mark is being used merely as an ornamental element of the clothing, or rather properly functioning as a source identifier on the goods. Often times, trademark applicants are surprised to find that their proposed mark has been refused a registration because the United States Patent and Trademark Office (USPTO) has found the mark to be “merely ornamental” and thus not functioning as a trademark.

Registration of a trademark is only available for words, phrases, designs and the like that actually function as trademarks as used in commerce. Branding is a term often used to describe one’s marketing efforts to associate goods and services with a particular source. A brand is defined by the American Marketing Association as “A name, term, design, symbol, or any other feature that identifies one seller’s good or service as distinct from those of other sellers.”[1] This definition of a brand is akin to a trademark as found in the Trademark Act.

According to the USPTO, “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. This matter should be refused registration because it is merely ornamentation and, therefore, does not function as a trademark.” (Trademark Manual of Examination Procedure (TMEP), §1202.3(a)). Determining whether or not a proposed use is decorative/ornamental is not a cut and dry process. 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). The TMEP provides some guidance with respect to use of a mark on clothing, but no bright-line rule exists for making a determination whether or not a mark is purely ornamental in nature. As noted in the TMEP, “the examining attorney [the USPTO representative responsible for evaluating a trademark application] 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 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 likely to 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.” (TMEP §1202.3(a)).

So, the commercial impression of a proposed mark is a key factor in determining whether or not the use of a mark having ornamental features is in fact a bona fide use of the mark. Will the public view your proposed mark as a proper source identifier, or will the mark be perceived as merely an ornamental feature of the clothing? Use of a “small, neat and discrete” word or design may help create the commercial impression of a source identifier, but this is not always the case. “Have A Nice Day” written on the front of a t‑shirt is likely to convey nothing about the source of the t‑shirt, whereas a small logo on the back of the shirt at the neckline or on a tag inside the shirt may properly identify the source.

Recent decisions from the Trademark Trial and Appeal Board (TTAB) may shed some light on how a mark’s commercial impression is perceived at the TTAB level. In a case recently decided by the TTAB, a trademark applicant was refused registration of an applied-for mark, LAGUNA SURF AND SPORT (and design), as the Examining Attorney held that the mark was merely decorative or an ornamental feature of the goods as found in the specimen of record (Figure 1). In re LS&S Retail, Inc., (TTAB 2010).[2]

The trademark applicant appealed this case to the TTAB and the Board agreed with the Examining Attorney’s reasons for refusal. In affirming the refusal to register the applied-for mark, the Board explained:

The specimen [Figure 1] shows the proposed mark prominently displayed in the upper center portion of the t-shirt. The proposed mark is displayed on the front of the shirt in a manner that immediately catches the eye. The size, location, and dominance of applicant’s proposed mark on the t-shirt supports the conclusion that the proposed mark would serve an ornamental rather than a source identifying function on the goods.

It is our view that the proposed mark in application Serial No. 77525450 is primarily an ornamental feature of the goods and, therefore, it does not function as a trademark for the goods. In re LS&S Retail, Inc., Serial No. 77525450, (TTAB 2010).

In another case recently decided by the TTAB, the Board found for a trademark applicant by reversing an ornamental refusal for the mark ALL AMERICAN WOMEN as used on wearing apparel shown in Figure 2.

With reference to the applicant’s specimen of use (Figure 2), the Board stated:

In short, we fail to understand the Examining Attorney’s argument that consumers would perceive applicant’s mark ALL AMERICAN WOMAN, as used on applicant’s specimen, as anything other than a trademark. Applicant’s mark is not presented in an extremely large fashion such that it might be perceived as a statement about the wearer, and thus serve as mere ornamentation. Likewise, applicant’s mark is not repeated over and over on the specimen such that it might appear as mere ornamentation. Rather, applicant’s mark appears but once on the specimen.

In sum, we find that the Examining Attorney has failed to demonstrate how applicant’s mark, appearing over the left breast pocket of the t-shirt in a small and discreet manner, would be perceived as anything other than a trademark. Accordingly, we reverse the refusal to register. In re Big American Man, Serial No. 76200528, (TTAB 2005).[3]

Thus, when using a mark on an article of clothing, or similar goods, it is important to evaluate how the public will perceive the mark and what commercial impression the mark will make on the consuming public. The ability of your mark to function as a source identifier of the associated goods must come through in the use of your mark in order for your mark to be eligible for trademark registration.

                                                                                        

[1] As found at the American Marketing Association website: http://www.marketingpower.com/_layouts/Dictionary.aspx?dLetter=B

[2] This case is not a precedent of the TTAB.