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  • Writer's pictureTodd

Trademarks that are Ornamentation

When filing an application alleging use of a trademark, you have to provide proof that you’re using that trademark in commerce in connection with the goods. This is called a specimen.

When it comes to clothing, you should file a specimen that shows the mark on a tag attached to the shirt. If you file a speicmen with a large graphic across the front of your shirt, you might get an ornamentation refusal.

What does an ornamentation refusal mean? A trademark application can be refused for being a merely decorative feature that does not identify the goods and does not function as a trademark. This refusal can apply to logos, slogans, and names associated with clothing.

When the US Soccer Federation tried to take the historic DOS A CERO slogan away from the fans by filing a trademark application, I filed a protest letter arguing failure to function as a trademark, pointing to the history of the slogan, and several prior uses of the slogan, including on clothing. The application was ultimately abandoned.

I’ve seen some clever ways around avoiding an ornamentation refusal. Take this popular slogan for my local soccer team, the Columbus Crew. Columbus Til I Die! Homage clothing company sold a shirt with that slogan, and submitted this shirt on its website as a renewal specimen.

Columbus 'Til I Die T-Shirt

The Examining Attorney issued an Office Action stating “it does not show use of the registered mark in a manner in which it will be perceived as a trademark.” So, Homage submitted this as a specimen.

Columbus 'Til I Die T-Shirt with hangtag

This example shows the importance of submitting a proper specimen by considering the difference between ornamentation and a mark attached to a tag as a source-identifier.

Please note that the information contained in this article is intended for general informational purposes only and not as specific legal advice. The facts of your situation may differ from this general information. It is not intended to and does not in any way establish an attorney-client relationship.

If you wish to schedule a consultation, let’s work together on your trademark needs


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