By Doni Robinson
The USPTO will reject an application if the applied for mark is merely a decorative or ornamental feature, because it fails to identify the source of the goods. This refusal for merely ornamental marks is mostly seen in clothing trademarks, where an applicant attempts to submit an application for a slogan on a t-shirt. These refusals can be seen beyond clothing as well. Most recently, the Trademark Trial and Appeal Board refused the registration of the mark I LOVE YOU for bracelets, when the specimen itself was simply a bracelet which said the words “I LOVE YOU” on it.
See In re Peace Love World Live, LLC, 127 USPQ2d 1400 (TTAB 2018) [precedential]. In that case, the Board considered whether the mark itself was a common expression. This alone would make it difficult to identify the mark, I LOVE YOU, as attributable to one particular source. As a consumer, it would be hard to imagine seeing a bracelet containing the words “I LOVE YOU” and recognizing that bracelet as emanating from one particular source. For this reason, the mark I LOVE YOU was refused registration because it was merely ornamental.
When advising clients in the clothing space on whether their applied for marks will be perceived as merely ornamental, and therefore refused registration, we want to consider how a consumer would view the words. Would the purchasers of the t-shirts automatically think the slogan identified the source of the goods? Or would they view the slogan only as a decoration on the goods? The easiest way to avoid this refusal is to consider the specimens you are submitting. In order to demonstrate to the USPTO that the mark truly functions as a trademark for clothing, ideal specimens should not only show the mark boldly displayed on the front of the shirt. Instead, the specimens should include tags, labels, or other indications that would help to show the USPTO that consumers would perceive the mark as related to one particular source. Another way to overcome an ornamental refusal is by providing evidence of acquired distinctiveness. Such evidence typically includes proof that of the applicant’s extensive use and promotion of the mark to demonstrate that consumers now directly associate the mark with the applicant as the source of the goods.
In the clothing space, merely ornamental refusals can go beyond words and phrases, and can also be seen when attempting to register a decorative feature of the mark. For example, Lululemon attempted to register a design mark “consist[ing] of a single line in a wave design that is applied to the front of a garment” for “hooded sweat shirts; jackets; coats.” The application contained a drawing of the applied for mark, indicating the design would largely be displayed on the front of the jackets. TTAB affirmed a refusal to register that mark, holding that absent to proving acquired distinctiveness, Lululemon’s wave design “is rather simple and looks like piping” and as such, be likely to be perceived by the public as merely ornamental. In re Lululemon Athletica Can. Inc., 105 USPQ2d 1684, 1687 (TTAB 2013). This refusal was issued in 2013, for an intent to use application submitted in 2008. The board noted that acquired distinctiveness cannot be shown on a mark not yet used in commerce. Since then, Lululemon has not only grown in popularity, thereby strengthening its acquired distinctiveness claims of any of its ornamental features, but has also changed its application strategy as well.
In applying for similar marks, Lululemon has overcome the ornamental refusals by waiting to submit its applications until the marks are being used in commerce, thereby having the opportunity to prove such acquired distinctiveness. For example, in 2015, Lululemon submitted an application for a U-shaped seam for “clothing, namely, tights, pants, leggings.” (Serial No. 86783719).
While the USPTO initially refused the registration on the basis of merely ornamental, Lululemon was this time able to achieve that registration by proving acquired distinctiveness (an option not previously available in the jacket case discussed above). Lululemon has become a power house in the “athleisure” industry and as such, the ability to use acquired distinctiveness to overcome that refusal was crucial for Lululemon. While years ago, a pair of yoga pants containing that design would likely be unrecognizable to a consumer (i.e. merely ornamental), as a consumer myself, I can confidently say I do associate that “U-shaped seam” as a source identifier of Lululemon, and the brand has a strong interest in protecting that association, just like any other mark owner.
If you are interested in obtaining a trademark application for either a phrase or design for clothing, but are concerned your mark may be perceived as merely ornamental, speak with an attorney at Jayaram Law. We have helped several clients overcome such refusals, and are equipped to properly advise on the registrability of the mark, and develop a sound application strategy as well.