So, you’ve applied for a trademark but your application was denied for being “merely ornamental” Under TMEP Section 1202.03. You’re now likely wondering, “What does that even mean?” and “How can I overcome this rejection?”
It helps to first understand how the United States Patent and Trademark Office (USPTO) defines “ornamental.” Ultimately, it just means “decorative”. And, it’s not uncommon for the USPTO examiners to raise this argument in objection to a trademark application for merchandise (think t-shirts, bumper stickers, mugs, etc.).
The USPTO will generally deny a trademark application if the sample submitted (called a “specimen”) appears to be merely decorative, rather than pointing the consumer back to the source of the good or service. That is, using a t-shirt as an example, an examiner might object to an application for the brand “MINE” if a specimen of a photo of the shirt showed merely “MINE” emblazoned across the chest, rather than a photo depicting the tag branding the t-shirt. If you wanted to find the source or a manufacturer of a t-shirt, where would you look? In most cases, the trademark would appear on the tag or on a breast pocket. So, if you were applying for a mark as an apparel designer, you would want to shoot to have your mark placed in a way that points to you as the source of what you are creating, instead of something that could be dismissed as mere “decoration” the design on the front or back of a t-shirt.
Remember, a trademark is a word, phrase, design or symbol that identifies the source of your product or services and distinguishes them from other companies. If the trademark is only being used in a decorative way, or a way that appears to be decorative, it may not give the “branding” impression in a customer’s mind.
Of course, there’s always a fine line between what the USPTO considers to be decorative and what you may believe is vital to your branding as a business owner. That’s where the help of a qualified attorney comes in. We can help you evaluate your specimen to determine what changes may need to be made to get your trademark approved without compromising your creative vision. If you need help getting started, we invite you to contact our office at 888-666-0062 to schedule a consultation.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney