The federal trademark registration process requires the applicant to file a specimen (example or proof of use) of the mark as it its used in commerce with the goods and services being registered. For actual use applications, the specimen is filed with the initial application. For intent to use applications, the specimen is filed after (within 6 months) the Notice of Allowance is issued (although an intent to use application can be converted to an actual use application during the prosecution process if it is in use in commerce while the application is pending.

The United States Patent and Trademark Office (USPTO) may reject a trademark application if the specimen indicates that the use of the mark is merely ornamental or a decorative feature on the goods and does not function as a trademark to indicate the source of the goods. The USPTO explains that “[A] slogan prominently displayed on the front of a t-shirt may be considered merely ornamental use and not trademark use. That is, most purchasers of the t-shirts would not automatically think the slogan identified the source of the goods but would view the slogan only as a decoration on the goods.”

Trademarks used on clothing and apparel can be especially tricky to deal with. Common expressions, graphics and symbols are normally not the type of matter perceived by the public as a trademark, that is, they are considered more decorative than indicative of where to buy the product.

There are a number of factors a Trademark Examining Attorney will consider in determining whether a logo is solely ornamental or functioning as a source-identifier (trademark). The USPTO has explained that “a small, neat, and discrete wording/design located on the pocket or breast portion of a garment (for example, a small design of an animal) may create the commercial impression of a trademark, whereas a larger depiction of the same wording/design prominently displayed across the front of a garment may be more likely to be seen as a purely decorative or ornamental feature of the goods. The size, location, dominance, and significance of your mark as applied to the goods are factors used to determine whether your mark functions as a trademark to identify the source of your goods or is merely ornamental. Although there is no definitive method or place to affix a mark to the goods, the location and size of a mark on the goods is part of the environment in which the public perceives the mark and may influence how the mark is perceived.”

There are three ways in which an applicant can overcome a refusal based on ornamentality:

  1. By proving inherent distinctiveness (its primary function is to identify the source of the goods, with its ornamental aspect being only incidental);
  2. By establishing acquired distinctiveness (consumer recognition of the mark as a brand identifier); or
  3. By showing that the mark is registered for other goods or services, and thus that the applied-for mark serves as a secondary source indicator.

Most businesses sell apparel bearing their brand names, slogans and logos. It is important to be able to prevent copycats from palming off your brand with T-shirt and hand-made craft websites like Café Press and Etsy. It is also required that a business police and enforce its marks against others using them without a license or consent from the brand owner. When it comes to obtaining protection on brand extensions into apparel, businesses building a cannabis brand can benefit from professional guidance to avoid the possibility of a trademark refusal for merely ornamental use on apparel related goods.