To overcome an ornamental refusal, you may submit evidence of the use of your trademark on goods or in connection with services other than those you listed in your application. This is known as secondary source. Typically, this option is applicable if you're applying for goods that are supplementary to other more primary goods or services that you provide.
In other words, you're already using your trademark with a different good or service, and you now want to register it as a trademark for the goods or services you use to promote that other good or service. To take advantage of secondary source, you must already have some underlying primary use of your trademark on other goods or services.
For example, a university may apply to register its university logo for T-shirts that it sells printed with the logo. Selling T-shirts is supplementary to the university’s primary function of providing educational services. If the university receives an ornamental refusal when submitting a picture of a T-shirt with the university logo across its front, the university may submit evidence that it provides educational services under the same trademark (such as a prior registration for the same trademark for educational services or a university course catalog showing non-ornamental use of the same trademark) to overcome the ornamental refusal.
For more information on secondary source, see TMEP §1202.03(c).
To show secondary source, you may provide evidence of one or more of the following:
- A U.S. registration number on the Principal Register for the same trademark for different goods or services based on use in commerce.
For example, if your current application is for the trademark LOWDOWN for T-shirts, you can show secondary source by providing the registration number for your federally registered trademark LOWDOWN for services identified as “entertainment, namely, live performances by a musical band.”
- A U.S. registration number on the Principal Register for the same trademark for different goods or services based on a foreign registration under Section 44(e) or Section 66(a) of the Trademark Act and where an affidavit or declaration of use in commerce under Section 8 or Section 71 was accepted.
For example, if your current application is for the trademark LOWDOWN for T-shirts, you can show secondary source by providing the registration number for your federally registered trademark LOWDOWN for services identified as “entertainment, namely, live performances by a musical band," which was federally registered based on a foreign registration.
- Non-ornamental use of the trademark in commerce on different goods or services.
For example, if your current application is for the trademark LOWDOWN for T-shirts, you can show secondary source by providing an advertising flyer showing that you are also using the trademark LOWDOWN to advertise live performances by a musical band.
- A pending use-based trademark application for the same trademark, which includes a specimen showing the trademark used in a non-ornamental manner for different goods or services.
For example, if your current application is for the trademark LOWDOWN for T-shirts, you can show secondary source by providing the serial number for your other pending application before the United States Patent and Trademark Office for the trademark LOWDOWN for “entertainment, namely, live performances by a musical band."
TEAS instructions for submitting evidence of use of trademark as an indicator of secondary source:
To respond to a nonfinal office action, use the Response to Office Action form.
To respond to a final office action, use the Request for Reconsideration after Final Action form. The instructions provided in both forms are the same. If you need technical assistance with TEAS, contact TEAS@uspto.gov.
Once you have opened the appropriate TEAS form:
- Answer "Yes" to the form question regarding needing to respond to a refusal to register your trademark.
- On the next portion of the form, under “ARGUMENTS,” enter in direct text an argument as to why the trademark is an indicator of secondary source or provide a prior registration number here and explain this prior registration is for the same trademark for different goods or services and shows secondary source.
- Under the “EVIDENCE” section, click on the “Attach” button to attach JPG/PDF image files of relevant evidence as needed to support your argument. The size of your attachment may not exceed 5 megabytes per file.
- Click the “Submit” button.