Tmep 1202.03: refusal on foundation of ornamentation, march. 2015 erectile dysfunction. (bitlaw)

Subject material that’s just an ornamental feature

doesn’t identify and distinguish the applicant’s goods and, thus, doesn’t function

like a trademark. An ornamental feature can include words, designs, slogans, or trade

dress. This trouble ought to be declined registration since it is just ornamentation

and, therefore, doesn’t be the trademark, as needed by §§1, 2, and 45 of

the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127.

Generally, the ornamentation refusal applies simply to

trademarks, to not service marks. See TMEP §§1301.02–1301.02(f)

regarding matter that doesn’t be the service mark.

Matter that serves mainly like a source indicator,

either inherently or because of acquired distinctiveness, and that’s only

incidentally ornamental or decorative, could be registered like a trademark. In

re Vital Pictures Corp., 213 USPQ 1111, 1114 (TTAB 1982).

Regarding registrability, ornamental matter may

be categorized along a continuum varying from ornamental matter that’s registrable

around the Principal Register, to purely ornamental matter that’s not capable of

trademark significance and unregistrable under any conditions, the following:

  • (1)

    Ornamental matter that can serve as an identifier

    of the “secondary source” is registrable around the Principal Register. For

    example, ornamental matter on the T-shirt (e.g., the designation “NEW You are able to

    UNIVERSITY”) can convey towards the purchasing public the “secondary source” of

    the T-shirt (as opposed to the manufacturing source). Thus, even in which the

    T-kit is written by a celebration apart from that recognized by the

    designation, sponsorship or authorization through the identified party is

    indicated. See



  • (2)

    Ornamental matter that’s neither inherently

    distinctive nor another source indicator might be registered around the

    Principal Register under §2(f), when the applicant establishes the

    subject material has acquired distinctiveness like a mark with regards to the

    goods. See



  • (3)

    Ornamental matter that’s neither inherently

    distinctive nor an indication of secondary source, and it has not acquired

    distinctiveness, but is capable of doing attaining trademark significance, might be

    registered around the Supplemental Register within an application under §1 or §44 of

    the Trademark Act.

  • (4)

    Some matter is decided to become purely

    ornamental and, thus, not capable of trademark significance and unregistrable

    on either the main Register or even the Supplemental Register.




The analyzing attorney should think about the next

factors to find out whether ornamental matter could be registered: (1) the commercial

impression from the suggested mark (2) the appropriate practices from the trade (3)

secondary source, if relevant and (4) proof of distinctiveness. These 4 elements

are discussed within the following sections.