Trademark Use vs. Decorative Use
Not every use of a word, slogan or design on a product is trademark use. A trademark tells consumers who makes or sells the goods. Decorative use is part of the product itself: something the customer buys because they like how it looks or what it says. The USPTO refuses to register matter that appears to be merely decorative, and this "ornamental refusal" is one of the most common problems for clothing, accessories, mugs, stickers and other merchandise.
What the USPTO looks for:
The examining attorney asks whether a consumer would see the matter as a brand or as decoration. Four factors are considered:
Size. A small mark is more likely to be viewed as a brand. A large slogan or image is more likely to be seen as decoration.
Location. Neck labels, hang tags, a small logo on the left chest, and packaging are where consumers expect to find brands. The center of a shirt front is where they expect to find artwork.
Dominance. Matter that fills the product or is the main visual feature tends to be seen as part of the design.
Significance. Common phrases, popular expressions and messages ("Have a Nice Day", "I Love My Dog") are usually perceived as something the customer wants to display, not as a source identifier.
Likely to be seen as trademark use:
the mark on a woven neck label, sewn tag or printed inside label
the mark on a hang tag, box, bag or other packaging
a small logo on the left chest or sleeve of a shirt, or on the side of a cap
Likely to be seen as decorative use:
a slogan or quotation printed in large letters across the front of a t-shirt
a logo or image that covers most of the front of a garment, hat or tote bag
a repeating pattern on fabric, tableware or wrapping paper
decorative stitching on the back pocket of jeans
The same mark can fall on either side of the line. A design printed small on the chest may function as a brand, while the identical design printed across the whole shirt may not. Adding the ™ symbol does not by itself convert decorative matter into a trademark.
Secondary source:
Matter that appears decorative may still be registrable if consumers recognize it as coming from a known source. For example, a university name across the front of a sweatshirt indicates that the shirt is licensed or sponsored by the university, because the university is known for its educational services. Evidence of this "secondary source" may include a registration for the same mark for other goods or services, or proof of substantial use of the mark elsewhere.
Why this matters for your application:
For applications based on use, the specimen you submit must show the mark used as a trademark. A photo of a t-shirt with your brand across the front, without a label or tag, invites a refusal. For applications based on intent to use, on a foreign registration, or on an international registration under the Madrid Protocol, the examining attorney may still issue an ornamental refusal if the mark itself appears to be decorative, for example a slogan or a common expression.
The options for overcoming the refusal depend on the filing basis. They may include submitting a substitute specimen, amending to an intent to use basis, amending to the Supplemental Register, proving acquired distinctiveness, or showing secondary source. Applications filed through the Madrid Protocol have the fewest options, so the way the mark is presented matters from the outset.
Practical steps:
Put your brand on a neck label or hang tag for every garment, even when the design on the front carries the same word or logo.
Photograph the label or tag clearly when preparing a specimen.
Treat your brand and your designs as separate things. The brand identifies you. The designs are what you sell.
If a slogan or graphic is itself the product, consider whether copyright, rather than trademark registration, is the better form of protection.
If you have received an ornamental refusal, or want to make sure your specimens will be accepted before you file, contact us. We can review how your mark appears on your products and advise on the best approach for registration.
For more on what the USPTO accepts as evidence of trademark use, see our Specimen Requirements page.