"Ornamental" Rejections for Apparel Trademarks
A logo or brand printed on a shirt or baseball cap might not be a trademark. The use of a brand in that way could be considered just a decoration, or "merely ornamental." The trademark is usually on a tag sewn into the article of clothing, or on a hangtag where one would also find the price. If you only have your brand name on the front of the shirt or hat, but not on a tag, you will likely receive a rejection from the USPTO.
A logo or brand printed on a shirt or baseball cap might not be a trademark.
Learn about common trademark mistakes that could jeopardize your brand’s success.
Understand the difference between a brand logo and a legally protected trademark.
By the end of this article, you’ll know how to take the necessary steps to protect your clothing brand, safeguard your apparel logo, and avoid costly mistakes that could impact your business.
The use of a brand in that way could be seen as a decoration, or merely “ornamental." The actual trademark is usually printed on the sewn-in tag or on the hang tag where you usually find the price. That is where the brand acts as a "source identifier.".
In order to qualify as a trademark, the brand must be a “source identifiers.” In other words, a consumer would have to be able to look at the branding and know which company is offering the goods or services. When a consumer sees a design on the front of the shirt, it might register as just a design. However, consumers know that the tags are where the brand name can be found. Sometimes, a brand on the front of a shirt or hat can act as a trademark, if the logo is not predominant and looks like a brand instead of a decoration.
This issue arises then new apparel companies come out with their first batch of clothes, but print their logo on the front of plain customizable clothing, such as Hanes or Gildan. The tags will still say “Hanes” or “Gildan.”
As part of the United States Patent and Trademark Office (USPTO) application process, you are required to show that your trademark is being used on your products as a source identifier. For apparel, a common option is to submit a photograph showing the trademark on an article of clothing. Unfortunately, if the photo only shows the brand name on the front of the shirt or hat in a way that looks like a decoration, you will likely receive a rejection from the USPTO. The only way to overcome the rejection is to show your brand name as a source identifier, such as on a hang tag or a sewn-in tag.
USPTO Trademark Applications: How to Determine First Date of Use & Select the Right Specimen OF USE
Locating an acceptable Specimen of Use can seem Sisyphean. In order to demystify this process, we compiled examples of specimens that the USPTO would find acceptable.
To successfully register a trademark with the United States Patent and Trademark Office (USPTO), the trademark must be actively used in commerce. The USPTO requires that a brand name is being used to sell a product or service before it can qualify for registration. As part of the application process, a trademark Application must include the first date of use of the trademark and submit a Specimen of Use. For 1(a) applications, this information is provided along with the application. For 1(b) applications, this is provided along with the Declaration of Use, after a Notice of Allowance is issued. In this guide, we will discuss how to successfully show the USPTO that your trademark is in use in US commerce, by using the correct first date of use, and selecting a sufficient Specimen of Use.
To Clarify this process, we have compiled a list of acceptable specimens of Use
Acceptable Specimens for Goods
For goods, an acceptable Specimen of Use is typically a photograph or digital image showing the trademark as it appears in commerce. Examples include:
A label, tag, or decal affixed to the product.
A label or tag hanging from the product.
Product packaging, boxes, or shipping containers displaying the trademark.
A point-of-sale display featuring the mark alongside the product.
A packing slip or packaging materials that include the trademark.
A catalog order sheet with an image of the product, the trademark, pricing, and purchasing instructions.
A screenshot of a webpage displaying the product, the trademark, pricing, and a "cart" icon.
A photograph of a frame from a movie or video that prominently displays the trademark.
If the product is downloadable software, a screenshot showing the trademark alongside purchase instructions and a download link.
A truck featuring the mark that ships the goods.
An instruction manual with the trademark included in product packaging.
Acceptable Specimens for Services
For services, an acceptable Specimen of Use typically consists of advertising or marketing materials that clearly reference the services being offered. Examples include:
Website pages advertising the services.
Print advertisements in magazines, newspapers, journals, or phone directories.
Marketing brochures, direct mail ads, flyers, and posters.
Business signage on storefronts or vehicles.
Invoices or proposal letters bearing the trademark.
Menus (for restaurant services).
Business letterhead, stationery, or business cards.
Trade show demonstration materials.
Showroom displays.
Billboard advertising.
Radio and television advertisements.
Branded promotional items such as T-shirts, hats, coffee mugs, calendars, pens, and buttons.
Before submitting a Specimen of Use, double-check this list—if your specimen isn’t listed, it may not be accepted by the USPTO.
While selecting, preparing, and submitting a Declaration of Use and Specimen of Use can require effort, working with an experienced trademark attorney can streamline the process and help avoid application rejections.
Understanding the First Date of Use in a USPTO Trademark Application
The First Date of Use in a USPTO trademark application refers to the date the trademark was first used in connection with the goods or services listed in the application. This includes the date it was first used in advertising, packaging, sales, or other commercial activities.
To qualify for federal trademark registration, applicants must also provide the First Date of Use in Commerce, which refers to the first time the trademark was used in interstate or international commerce—that is, commerce regulated by the U.S. Congress. According to the Commerce Clause of the U.S. Constitution (Article 1, Section 8, Clause 3), Congress has the authority to regulate interstate commerce, international trade, and commerce with Native American Tribes.
With today's digital economy, proving "Use in U.S. Commerce" is easier than ever. Many goods are now sold online, and services are offered virtually, making interstate commerce easier to establish.
Accurately reporting the First Date of Use is critical, as submitting false information can lead to trademark rejection or cancellation. To ensure compliance, trademark owners should keep detailed records of first use, including dated advertisements, invoices, and product packaging that displays the mark.
Final Thoughts
Navigating the USPTO trademark application process requires careful specimen selection and accurate date of first use reporting. Missteps can lead to delays, refusals, or even cancellation of the mark. Working with an experienced trademark attorney can provide guidance and ensure compliance with USPTO regulations.
Need help securing your trademark? Contact a trademark professional today to protect your brand and streamline your USPTO application process.