When applying for a trademark, applicants may face refusals based on the argument that the proposed mark is merely ornamental or decorative rather than a true source identifier. Under Sections 1, 2, and 45 of the Trademark Act, the United States Patent and Trademark Office (USPTO) evaluates whether a mark serves as an indicator of origin or is simply a design element. This issue is particularly relevant in the context of trademarks used on apparel, accessories, and other merchandise, where consumers might perceive certain marks as mere aesthetic elements rather than brand identifiers. However, applicants can overcome a USPTO trademark refusal by demonstrating secondary source, which establishes that the mark functions as a trademark through acquired distinctiveness or its association with other registered trademarks.
Understanding Ornamentation Refusals and the Role of Secondary Source
Ornamentation refusals commonly affect trademarks rather than service marks. The key issue in these cases is whether an average consumer would view the mark as a brand identifier or simply as a decorative feature. If the USPTO determines that the mark is primarily ornamental, it will refuse registration. However, this is not a straightforward black-and-white determination. Instead, ornamentation exists on a spectrum, where certain marks, though decorative in nature, can still qualify for trademark protection if they meet specific criteria.
One of the leading cases in this area is In re Paramount Pictures Corporation, 213 U.S.P.Q. 1111 (TTAB 1982). In this case, the Trademark Trial and Appeal Board (TTAB) recognized that a mark could still function as a source identifier even if it had incidental ornamental elements. If the mark has inherent distinctiveness or has acquired secondary meaning, it may qualify for registration on the Principal Register. This principle provides an important foundation for applicants seeking to register marks that might otherwise face an ornamentation refusal.
Overcoming a USPTO Trademark Refusal Based on Ornamentation
To address an ornamentation refusal, applicants must present compelling evidence that the mark serves as a source identifier. One of the most effective trademark registration strategies involves proving secondary source. This concept demonstrates that even if a mark appears ornamental on certain goods, it is still associated with a specific entity or brand due to its established reputation.
A key example of this principle in practice is Disorderly Kids, LLC v. Roman Atwood, Cancellation No. 92062027 (November 28, 2018). This case involved an attempt to cancel the SMILE MORE trademark registration for items such as shirts, stickers, backpacks, and retail store services. The TTAB ruled that while the mark was used in an ornamental manner, it still conveyed a secondary source due to the registrant’s efforts in brand enforcement and proper trademark usage.
Lessons from the SMILE MORE Case
In Disorderly Kids, LLC v. Roman Atwood, the TTAB analyzed several factors to determine whether SMILE MORE functioned as a trademark:
- Enforcement Efforts – The registrant actively policed the mark, issuing over fifty cease-and-desist letters in two years, which led to the removal of thousands of infringing products from the market. This demonstrated the registrant’s commitment to maintaining the distinctiveness of the mark.
- Use in Commerce – The registrant utilized the mark in connection with an online retail store and a popular YouTube channel. This demonstrated that the mark was more than just a decorative element—it was associated with a broader brand identity.
- Consumer Perception – The Board found that the public did not perceive SMILE MORE as a purely ornamental phrase. Instead, it functioned as a trademark, signaling a specific origin for the associated goods and services.
The TTAB ultimately dismissed the petition for cancellation, concluding that SMILE MORE, despite its decorative appearance, successfully communicated a secondary source to consumers.
Establishing Secondary Source to Overcome Ornamentation Refusals
To prove that a mark conveys a secondary source, applicants can provide evidence of the following:
- Ownership of an Existing Registration – If the applicant already owns a trademark registration for the same mark on the Principal Register for related goods or services, it strengthens the argument that consumers recognize the mark as a brand identifier.
- Foreign Trademark Registration – If the mark has been registered abroad under Section 44(e) of the Trademark Act and an affidavit of use under Section 8 has been accepted, it may serve as evidence of secondary source.
- Non-Ornamental Use in Commerce – Demonstrating that the mark is used in a manner that clearly indicates source—such as product packaging, advertising, or branding—can establish secondary source.
- Pending Use-Based Application – If an applicant has a pending application where the mark is used in a non-ornamental manner for other goods or services, this can support the claim that the mark functions as a trademark.
However, simply owning an intent-to-use application without demonstrating actual use is insufficient to establish secondary source. The applicant must provide tangible evidence that the mark has been used in commerce in a manner that supports its role as a trademark.
Key Considerations for Applicants Facing an Ornamentation Refusal
Applicants facing a USPTO trademark refusal based on ornamentation should take proactive steps to reinforce their case. Some of the most effective trademark registration strategies include:
- Proper Specimen Submission – When filing a trademark application, it is crucial to submit specimens that clearly illustrate the mark’s function as a source identifier. This could include product labels, hangtags, or marketing materials rather than merely images of the mark printed on merchandise.
- Brand Enforcement – Demonstrating active enforcement against infringers, as seen in the SMILE MORE case, can help establish the distinctiveness of a mark. Sending cease-and-desist letters and documenting trademark protection efforts can be beneficial in overcoming an ornamentation refusal.
- Marketing and Consumer Recognition – Evidence that consumers associate the mark with a specific company, such as social media engagement, advertising campaigns, and third-party references, can support the argument for secondary source.
- Use in Multiple Contexts – Showing that the mark is not just used decoratively but also in other brand-related contexts, such as on packaging, websites, and business materials, can further solidify its status as a trademark.
The Importance of Legal Guidance in Trademark Registration
Navigating a USPTO trademark refusal requires a comprehensive understanding of trademark law and effective application strategies. Consulting an experienced Trademark Attorney can significantly increase the likelihood of success. A skilled attorney can assist with evidence gathering, proper specimen selection, and persuasive legal arguments to demonstrate that the mark functions as a trademark rather than merely an ornamental design.
If an applicant receives an ornamentation refusal, it is crucial to act promptly. Responses to office actions should be well-reasoned and supported by compelling evidence. In cases where a refusal cannot be overcome, applicants may consider alternative registration options, such as:
- Supplemental Register – If a mark does not yet meet the criteria for the Principal Register, it may still be eligible for the Supplemental Register, which provides some legal protections and allows for future claims of acquired distinctiveness.
- Alternative Branding Approaches – Adjusting how the mark is used in commerce, such as incorporating it into logos or distinct branding elements, can improve its chances of registration.
- Reapplication with Stronger Evidence – If initial efforts fail, reapplying with better documentation and enhanced brand recognition may lead to eventual success.
Conclusion
Overcoming a USPTO trademark refusal based on ornamentation requires a strategic approach backed by legal expertise and strong evidence. By leveraging secondary source arguments, demonstrating brand enforcement efforts, and carefully presenting the mark in commerce, applicants can improve their chances of successful registration.
The SMILE MORE case serves as a valuable example of how a mark, even when used in a decorative manner, can still function as a trademark if it conveys a secondary source. For businesses facing similar challenges, understanding trademark registration strategies and working with a knowledgeable Trademark Attorney can make all the difference in securing and protecting their brand identity.
For those with questions about whether their mark functions as a trademark or how to respond to a USPTO refusal, seeking professional legal guidance from a Trademark Attorney is highly recommended. Ensuring proper registration not only protects intellectual property rights but also strengthens brand recognition in the marketplace.