Ornamentality: When Eye-Catching Isn't Distinctive

• Published date: 23 March 2022
• Subject Matter: Consumer Protection, Intellectual Property, Consumer Law, Patent, Trademark
• Law Firm: Seyfarth Shaw LLP
• Author: John Carl "JC" Zwisler, Matthew Brekus and Brian L. Michaelis

Picture this, you've created a unique word, phrase, or design for identifying your business and its products or services. It's eye-catching, memorable, and most of all, yours. You prepare an application to register your mark with the United States Patent and Trademark Office ("USPTO"). Shortly thereafter, you receive a letter. An Examining Attorney reviewed your mark and ... found it to be merely decorative. Your application has been rejected on the basis of ornamentality. This article sets out to help guide an applicant or their agent in ways that may overcome an ornamentality refusal, or prevent such a refusal being raised in the first place.

A trademark is a source-identifying word, phrase, or design intended to link in the minds of consumers a product or service to its source. A trademark must be more than only original or aesthetically pleasing. In other words, a trademark must be more than merely ornamental to be registered.

In applying for a trademark registration with the USPTO, an Examining Attorney reviews the application to ensure the applied-for-mark will identify the source of the goods or services listed in the application and is not confusingly similar with another registered mark. In other words, the Examining Attorney wants to ensure the applied-for-mark will link a product or service to your business or brand and consumers will not confuse your mark with another pre-existing applied-for or registered mark.

The USPTO has been rejecting more and more applications on the basis of ornamentality. See Jeffrey Turben, Failure to Function: Ornamental Refusals, Alt Legal (May 26, 2021), https://blog.altlegal.com/alt-legal-ip-docketing-blog/failure-to-function-ornamental-refusals (describing the USPTO as issuing upwards of 50 ornamental refusals in a single day).

In order to ensure you have the greatest chance at registering your applied-for-mark, or overcoming an ornamentality refusal, we have set out ways to overcome this refusal.

First, it is important to consider how a mark can be registered. The USPTO reviews applications to determine the distinctiveness of each mark and categorizes them as either: (1) generic, e.g. DIET CHOCOLATE FUDGE SODA for a low calorie beverage; (2) descriptive, e.g. SECURITY CENTER for a security service; (3) suggestive, e.g. COPPERTONE for sunscreen; or (4) arbitrary or fanciful, e.g. KODAK for cameras. See A&H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 221 (3d Cir. 2000) (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S. Ct. 2753 (1992)). Generic marks can never be registered. Descriptive marks may be registered in some instances, while inherently distinctive marks, i.e. arbitrary or fanciful marks, will not be barred from registration on distinctiveness grounds.

If...