"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.
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.
How to Select the Right Specimens of Use for Your Trademark.
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.
For a mark to be registered in the United States Patent and Trademark Office (“USPTO”), it must be in use. A mark owner is required to submit a Declaration of Use and a Specimen of Use prior to registration, then again 5-6 years after registration and every 10 years after the registration date.
The Declaration of Use is a statement by the owner swearing under penalty of perjury that the mark is in use in United States commerce in connection with each one of the goods and services listed in the application or registration.[1]
Finding an acceptable Specimen can seem Sisyphean.
While the Declaration of Use should not be taken lightly, the process of preparing and submitting it is relatively straight-forward.
On the other hand, 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.
Specimens for Goods
Generally, specimens for goods are photographs or digital images that show the mark in use in conjunction with the goods. Specific examples include:
a label, tag or decal of the mark, affixed to the good
a label or tag hanging off the product showing the mark
packaging, boxes or shipping containers with the mark
a display where the good is shown along with a sign or poster on which the mark is displayed or point of sale display materials
a packing slip or packaging materials which is shipped with the goods and shows the mark
a catalog order sheet with an image of the product and the mark, in close association with price and ordering instructions
a screen shot of a webpage, showing the product, the mark, a price and a “cart” icon
a photograph of a of a frame of a movie or video tape which shows the mark;
if the product is downloadable software, a screen shot which shows the mark, with purchase instructions and way to download the software
a truck with the mark displayed that ships the goods
a instruction manual showing the mark that is included in the packaging sold with the product
Specimens for Services
Generally, specimens for services are advertisements that show the mark and make a clear reference to the services. Specific examples include:
internet web page advertising
advertising appearing in a paper publication, such as a magazine, newspaper or journal or telephone directory
promotional brochures, direct mail advertising, handbills, posters, leaflets, circulars, fliers
business signage on a store front or vehicle
Invoices or proposal letters
If a restaurant, a menu
business letterhead, stationery or business cards
trade show demonstration materials
displays in a showroom
billboard advertising
radio/television advertising
gift items which service as advertisements, such as T-shirts, hats, coffee mugs, calendars, pencils, pens, coasters, buttons
Once you have located a specimen, take a second look at this list – if it is not there, chances are, it will not be accepted by the USPTO.
While selection, preparation and submission of both the Declaration of Use and Specimen of Use will always require some effort by the mark owner, many of the complications can be ameliorated by the help a qualified trademark practitioner.
[1] “Use in commerce” is defined as commerce that may be regulated by congress. This is further defined in US Constitution, Article 1, Section 8, Clause 3, also known as the Commerce Clause, which states that congress can regulate interstate commerce, commerce between nations and commerce with Native American Tribes.