TradeMark Express Blog: All Things Trademark

Refusal on Basis of Ornamentation

I've devoted a few posts to the subject of trademarks and clothing lines but it wasn't until I was talking with a client yesterday that I realized I had answered the what but not the why.

I was explaining to the client that submitting a picture of a t-shirt with his clothing line name on the front would not suffice as proof of use for the USPTO. He then asked me why. After getting off the phone, I realized that while I had answered him I hadn't fully addressed it here.

The title of this post is the response you'd likely get from the USPTO if you submit a photo of a t-shirt with your name and/or logo displayed on the front.

What does refusal on basis of ornamentation mean exactly?

"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 other trade dress. This matter should be refused registration because it is merely ornamentation and, therefore, does not function as a trademark"

Okay, let's explain that using non-legalese language. When an in use USPTO application is submitted, a specimen must also be filed.

For clothing, a lot of folks make the guess that submitting a picture of one of their t-shirts with the name on the front will work. And that does seem to make a lot of sense. But when it comes to trademarks, you've got to "identify and distinguish" your name to your clothing.

This means that your name must be on a tag or a label that'd be attached to a garment that identifies it as being the name of the line itself & not just part of the overall artwork applied to the front of the shirt.

If you've got a clothing line & aren't sure what would work as a specimen, feel free to email me at shannon@tmexpress.com & I'd be happy to go over your specific details with you.