The clothing industry is highly lucrative and competitive, with many manufacturers vying to build a brand and capture a share of the market by trademarking their brand name. However, the Trademark Office routinely rejects many proposed trademarks in the clothing category on the grounds that they are merely ornamental or decorative in nature.
When a trademark is rejected as being decorative or ornamental, it essentially means that it does not function as a trademark by identifying the source of the goods. This is especially true if the brand or mark is prominently displayed on an article of clothing. This type of refusal is not only common with clothing, but any printable product such as bags, mugs, pens, notebooks, hats, masks, cups, or anything else which is promotional in nature.
The best way to overcome an ornamental or decorative refusal is to properly use the trademark so it can act as a source identifier. For clothing, this is usually done by placing it either on the clothing tag or the clothing packaging. The location, placement, and size of the mark is critical in determining whether it is ornamental or acting as a trademark. So a trademark can be printed prominently on a shirt or hat, but if it is also used on the tag or packaging then it is much easier to overcome the rejection and move forward with the application.
Example of ornamental trademark refusal
The owners of the brand Lululemon tried to register a trademark which consisted of “a single line in a wave design that is applied to the front of a garment” for sweat shirts, jackets, and coats.
However, the Trademark Office rejected the proposed trademark on grounds that it is merely ornamental as applied to the goods being offered. Lululemon appealed to the Trademark Trial and Appeal Board. On appeal, the TTAB affirmed the refusal and stated that the applicant can overcome such refusal by showing that the design is “inherently distinctive or has acquired distinctiveness as to the goods in the application…” (See In re Lululemon Athletica Canada Inc., 105 USPQ2d 1684 (2013))
The TTAB board further noted that the determination as to whether a proposed trademark is ornamental depends on “the size, location and dominance of the designs”.
When trying to register a trademark that appears on any printable product, please seek the advice of a trademark attorney. Not only will they be able to guide you in the right directions, but they may help you avoid expensive and protracted trademark prosecution.
