Ornamental refusal and how to overcome this refusal

An ornamental refusal is when the United States Patent and Trademark Office (USPTO) refuses to register your trademark because the submitted specimen doesn’t show the trademark being used to identify the source of the goods or distinguish them from the goods of others. A trademark cannot appear as merely an ornamental or decorative feature on the goods.

You may receive this refusal in an office action about your application during the examination process. You’ll need to respond to the office action.

It is possible to overcome an ornamental refusal. You have a variety of response options to choose from, described further below.

Examples of ornamental refusals

To avoid an ornamental refusal, consider the size, location, dominance, and significance of your trademark as used on your goods. These are factors that determine whether your trademark functions as a trademark that identifies the source of your goods or is merely ornamental.

A quote prominently displayed across the front of a T-shirt, such as “The Pen is Mightier than the Sword.” Most purchasers would perceive the quote as a decoration and would not think that it identifies the manufacturer of the T-shirts (the source of the T-shirts could be Hanes® or Champion®, for example, as shown by the neck label).
A logo on the front of a hat. The logo is associated with an organization, like a sports team, which did not manufacture the hat. Another example is a large display of a logo on the front of a garment.

In re Lululemon Athletica Can. Inc., 105 USPQ2d 1684 (TTAB 2013)

Stitching designs on the back pocket of a pair of jeans. Purchasers are accustomed to seeing embellishments on jean pockets and would not think this embroidery design identifies the source of the jeans.

Drawing of blue and gold stitching design on the back pockets of jeans. This is an example of ornamental refusal.

: Drawing of a ripple single wave stitching design on the back pockets of jeans. This is an example of ornamental refusal.

Drawing of a curved line stitching design on the back pockets of jeans. This is an example of ornamental refusal.

In re Right-On Co., Ltd, 87 USPQ2d 1152 (TTAB 2008)

A floral pattern on tableware or silverware. A purchaser would likely see this pattern as merely decorative and would not think it identifies the source of the tableware or silverware. In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987)
The phrase “Have a Nice Day” or a smiley face logo. Everyday expressions and symbols that commonly adorn products are normally not perceived as identifying the source of the goods.
A trademark displayed prominently across the face of a shirt. Consumers are likely to view such use as merely decorative and indicating the wearer’s support for the band, musical festival, or album. Consumers would not view such use as indicating the source of goods.

For more information, see Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; and TMEP §§904.07(b), 1202.03 et seq.

Examples of proper trademark use

While there is no definitive place to affix your trademark to your goods to avoid an ornamental refusal, remember that the location, size, and dominance of a trademark has a big impact on how the public perceives it.

A tag on the outside of the garment. A purchaser would associate a logo on the tag with the maker of the garment.

Close-up photo of a hang tag and sticker on a pair of pants. Both include the Hanes trademark, the words “premium,” “toddlers,” and “cotton rich softness.” The hang tag shows a smiling toddler, and the sticker also reads “pant 3T.”

Discrete wording or design on the pocket or breast portion of a shirt. A purchaser would typically associate the small logo on a shirt pocket or breast area with the manufacturer or the source of the shirt.

A tag on the inside of a hat or garment. A purchaser would associate a logo on the tag with the maker of the garment.

Close-up photo of a tag sewn into the inner neckline of a gray t-shirt. The tag shows the Fruit of the Loom trademark, a second trademark that reads “Iconic Tee” in stylized font, and the shirt size. An attached hang tag lists other product details.

Screenshot of a product webpage with three different views of a fleece vest. The selected image is a close-up photo of a tag sewn into the inner neckline, which shows the L.L. Bean trademark. The trademark also appears at the top of the webpage.

Logo on a tag above the back pocket of a pair of jeans. A purchaser would typically associate this trademark with the manufacturer of the jeans.

Close-up photo of a leather patch on the back of a denim waistband. The patch is tan and branded with a Calvin Klein trademark.

A small logo stamped on the back of a dinner plate or bottom of a coffee mug. Purchasers are accustomed to seeing a trademark used in this location to identify the source of the tableware.

Lenox specimen shows trademark use for China plates. The specimen is a photograph showing the trademark printed on the bottom of a plate.

The specimens webpage for more examples of how to submit a proper specimen.

Overcoming an ornamental refusal

There are five possible options for overcoming an ornamental refusal. Some options may not be available for your specific application. If applicable, you may:

Submit a verified substitute specimen: Available to applicants filing under “use in commerce” basis, you must submit a substitute specimen that demonstrates proper, non-ornamental use of your trademark in commerce for your goods.
Amend your application from the Principal to the Supplemental Register: Available to most applicants, your trademark will not receive all the same legal advantages as trademarks on the Principal Register, but it will be protected against conflicting trademarks in later-filed USPTO applications.
Submit evidence that the trademark has acquired distinctiveness under Section 2(f): Available to any applicant, you can submit evidence showing consumers directly associate your trademark with the source of the goods through long-term use in commerce, advertising and sales figures, dealer and consumer statements, or other evidence.
Submit evidence of use of the trademark to establish a secondary source for the applicant’s goods: Available to any applicant, you must submit evidence of use of your trademark on goods or in connection with services that differ from the goods listed in your application.
Amend your filing basis to intent to use under Section 1(b): Available to most applicants (if they haven’t submitted a statement of use), you must change your filing basis to intent to use and provide a proper specimen later in the application process.

Section 44 applicants cannot submit a verified substitute specimen. Section 66 applicants may only submit evidence that the trademark has acquired distinctiveness under Section 2(f) or submit evidence of use of the trademark to establish a secondary source for the applicant’s goods.

Once you respond, check the Trademark Status and Document Retrieval (TSDR) system regularly to monitor your application’s status. Any additional office actions will be posted in TSDR and sent to you based on your contact preferences.