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Writing Competition 1st Place: Copyright and Typography: Separating Typography from its Past
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Writing Competition 2nd Place: Deepfakes are Taking Over Social Media: Can the Law Keep Up?
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Ornamentality: When Eye-Catching Isn’t Distinctive
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Deferred Subject Matter Eligibility Response (DSMER) Pilot Program Is Now Open
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Brazilian Pharmaceutical Patents: The End of ANVISA'S Controversial Prior Consent
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Volume 53, Issue 1

Ornamentality: When Eye-Catching Isn’t Distinctive

By JC Zwisler, Matthew Brekus and Brian Michaelis, Seyfarth Shaw
Picture this, you’ve created a unique word, phrase, or design for identifying your business and its products or services. It’s eye-catching, memorable, and most of all, yours. You prepare an application to register your mark with the United States Patent and Trademark Office (“USPTO”). Shortly thereafter, you receive a letter. An Examining Attorney reviewed your mark and … found it to be merely decorative. Your application has been rejected on the basis of ornamentality. This article sets out to help guide an applicant or their agent in ways that may overcome an ornamentality refusal, or prevent such a refusal being raised in the first place.
A trademark is a source-identifying word, phrase, or design intended to link in the minds of consumers a product or service to its source. A trademark must be more than only original or aesthetically pleasing. In other words, a trademark must be more than merely ornamental to be registered.
In applying for a trademark registration with the USPTO, an Examining Attorney reviews the application to ensure the applied-for-mark will identify the source of the goods or services listed in the application and is not confusingly similar with another registered mark. In other words, the Examining Attorney wants to ensure the applied-for-mark will link a product or service to your business or brand and consumers will not confuse your mark with another pre-existing applied-for or registered mark.
The USPTO has been rejecting more and more applications on the basis of ornamentality. See Jeffrey Turben, Failure to Function: Ornamental Refusals, Alt Legal (May 26, 2021), https://blog.altlegal.com/alt-legal-ip-docketing-blog/failure-to-function-ornamental-refusals (describing the USPTO as issuing upwards of 50 ornamental refusals in a single day).
In order to ensure you have the greatest chance at registering your applied-for-mark, or overcoming an ornamentality refusal, we have set out ways to overcome this refusal.
First, it is important to consider how a mark can be registered. The USPTO reviews applications to determine the distinctiveness of each mark and categorizes them as either: (1) generic, e.g. DIET CHOCOLATE FUDGE SODA for a low calorie beverage; (2) descriptive, e.g. SECURITY CENTER for a security service; (3) suggestive, e.g. COPPERTONE for sunscreen; or (4) arbitrary or fanciful, e.g. KODAK for cameras. See A&H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198, 221 (3d Cir. 2000) (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S. Ct. 2753 (1992)). Generic marks can never be registered. Descriptive marks may be registered in some instances, while inherently distinctive marks, i.e. arbitrary or fanciful marks, will not be barred from registration on distinctiveness grounds.
If an applied-for-mark is considered inherently distinctive, it may be registered on the Principal Register. The Principal Register provides “all the rights provided by the [Trademark] Act.” See TMEP § 801.02(a); see also 15 U.S.C. §§ 1051-72 (listing rights provided by a registration on the Principal Register).
If a mark is not inherently distinctive, it can be registered on the Supplemental Register until distinctiveness is achieved. Acquired distinctiveness is, to summarize an otherwise lengthy legal analysis, the familiarity of consumers with a mark and their ability to associate it with your goods or services after time and use in the market. The Supplemental Register is a listing of designations, such as descriptive words, that are capable of eventually becoming a trademark through acquired distinctiveness.
A registration on the Supplemental Register excludes a mark from certain advantages until it obtains a place on the Principal Register. A registration on the Supplemental Register does allow for use of the ® symbol, and can be cited against future applications for confusingly similar marks owned by third parties. See 15 U.S.C. §§1091-96 (listing rights provided by a registration on the Supplemental Register). A registration on the Supplemental Register can also be relied on as the basis for a claim, e.g., of infringement, in federal court.
If a mark is purely ornamental, it will not be registered on the Principal Register. See 15 U.S.C. §§ 1051-52, 1127. When developing your trademark and branding, care should be taken that the applied-for-mark does have the ability to, at least after time in the market, link a product or service to your brand. Many applied-for-marks, in our experience, enjoy this ability but some applications require more finesse to mature to registration.
Now that we have this framework in mind, what are the paths to overcoming an ornamentality refusal?
Ways to argue that the applied-for-mark is inherently distinctive may be based on: (1) the commercial impression of the mark, or how consumers would interpret the meaning of the applied-for-mark; (2) the relevant practices of the trade in which the applied-for-mark is or will be used; (3) evidence that consumers recognize the applied-for-mark as a source indicator, such as ownership of a registration on the Principal Register for, or use of, the same mark for other goods or services; and (4) evidence of distinctiveness such as long term continuous use, consumer surveys, and statements from industry professionals.
Preparing arguments and gathering evidence supporting that a mark is inherently distinctive may be time consuming and costly. An alternative, cost-effective and efficient method to overcome an ornamentality refusal may be to submit alternate evidence of the mark’s use, which is referred to as a substitute specimen. A “specimen” is a document showing use of the applied-for-mark in commerce, e.g. a photograph of clothing bearing the mark or a product listing in a catalog where consumers may order goods.
Selective choice of a specimen can save a lot of trouble and headache at the USPTO. For example, a shirt with a word or logo emblazoned across the front may be viewed by consumers, and perhaps more importantly, the Examining Attorney, as a mere design as opposed to a trademark. A specimen featuring such use is likely to receive an ornamentality refusal. See In re Lululemon Athletica Canada Inc., 105 U.S.P.Q.2d 1684, 1689 (T.T.A.B. 2013).
Although the USPTO recognizes that size cannot be the only consideration in determining how consumers would perceive a trademark, it does consider size, placement, and location when assessing the ornamentality of a mark. Id. at 1689. The USPTO has repeatedly determined that consumers would recognize a small word or design on the tag of clothing or on a breast pocket as a trademark as opposed to a design stretching across the front of a shirt. See, e.g., id. You may be able to overcome an ornamentality refusal by submitting a substitute specimen featuring use of the applied-for-mark in a manner that the USPTO views as use as a trademark.
A substitute specimen may not be available if, for example, you have already placed an order for goods with the applied-for-mark used as what the USPTO has rejected as ornamental. It may be worthwhile to adjust the use of your applied-for-mark on the next batch of products so that it is used in a way more likely to be viewed as a trademark, e.g., put the mark on a label or the interior of a garment in addition (or as an alternative to) the logo emblazoned across the front.
Alternatively, use of the applied-for-mark in connection with your goods on a website store page with the option to purchase goods may be acceptable as a specimen. An image of the goods with the applied-for-mark, an option to purchase the goods, the full domain URL the listing is located at, and the first date the goods were available are necessary for an acceptable specimen.
If none of these substitute specimen options are practicable, you may decide to amend your application for registration on the Supplemental Register. The Supplemental Register has a lower barrier to entry and may provide a federal registration while the mark acquires distinctiveness in the market. It is important to note that a registration on the Supplemental Register does not automatically move to the Principal Register. A new application with evidence of the applied-for-mark’s acquired distinctiveness is required to obtain registration on the Principal Register.
Evidence that the applied-for-mark has acquired distinctiveness may be submitted under Section 2(f) of the Trademark Act. See 15 U.S.C. § 1052(f). Evidence such as long-term exclusive use in commerce, advertising and sales figures, surveys showing consumer recognition, and dealer or consumer statements are examples of how a trademark owner may establish a mark has acquired distinctiveness. However, the less distinctive a mark is, the more evidence you will need to establish acquired distinctiveness. See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336 (Fed. Cir. 2015) (evidence of decades of use and two declarations from industry professionals was insufficient to establish that the mark FISH FRY for sauces and seasonings had acquired distinctiveness.)
Another means to overcome an ornamentality refusal is to submit evidence that consumers would recognize a mark as a “secondary source” of goods, i.e. the owner of the mark and not the manufacturer of the goods. In Disorderly Kids, LLC. v. Roman Atwood, Disorderly Kids, LLC sought to cancel Roman Atwood’s registration for the mark SMILE MORE for various goods including pens, stickers, and clothing. Cancellation No. 92062027 (T.T.A.B. Nov. 20, 2018). The Trademark Trial and Appeal Board (“TTAB”) determined that Atwood’s specimens of use in the underlying application displayed the mark in an ornamental fashion. However, the TTAB held that the SMILE MORE mark “conveys to the public a secondary source” namely Atwood’s YouTube channel and associated content “and is registrable on the Principal Register.” Id at 19. The TTAB pointed to In re Paramount Pictures Corp. wherein it previously held that when an ornamental mark performs the primary function of indicating the secondary source rather than the manufacturer, the mark is registrable on the Principal Register. 213 USPQ 1111 (T.T.A.B. 1982) (the TTAB held that consumers would recognize the MORK & MINDY mark as a secondary source of stickers as a result of use in connection with a television series.)
Examples of evidence that a mark would be viewed as a secondary source include: (1) ownership of a registration for the same mark on the Principal Register for different goods or services; (2) non-ornamental use of the mark in commerce on other goods or services; and (3) ownership of a pending use-based application for the same mark, used in a non-ornamental manner, for other goods and services. The prior use evidence must be exactly the same mark. Using a different mark will not overcome the refusal. See In re Lululemon, 105 U.S.P.Q.2d at 1690-91 (Applicant’s submission of prior use evidence of its wave design mark that varied in line thickness and use with other shapes was rejected as not being the same as the applied-for-mark in the application at issue.)
An application based on current use, i.e. the mark has already been used in commerce, may be amended to an intent-to-use basis, i.e. future use, in order to overcome an ornamentality refusal and provide an owner time to procure a substitute specimen or evidence of acquired distinctiveness. An intent-to-use based application may provide up to three years to gather and provide alternate specimens or evidence of use.
If all of the above fail and your application is refused based on ornamentality, the applied-for-mark may still be used in commerce! An inability to federally register your mark based on ornamentality does not prevent you from using your mark and continued use may form the basis for a later application relying on acquired distinctiveness. This may not be true if the refusal is based on a likelihood of confusion, but that is a topic for a different article.
If trademark protection hasn’t worked out, alternative forms of protection exist at the federal level, which may be available. Examples include design patents (providing protection for ornamental designs limited to 15 years of protection) or copyright protection depending on the character of your mark.
It is important to seek the advice of counsel in order to determine the appropriate type and scope of protection or registration for any assets. Counsel may work with you to accomplish business goals and obtain registrations for valuable trademarks. In our experience, tailoring a response to an ornamentality refusal requires knowing and understanding a client’s story and their envisioned future for their brand. At Seyfarth, we firmly believe businesses of any size, from start-up to Fortune 100, should be able to take advantage of the rights afforded by trademarks and protect the goodwill they’ve toiled to build in their brand.
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