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
TMEP
§1202.03(c).
-
(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
TMEP
§1202.03(d).
-
(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.
See
TMEP
§1202.03(a).
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.
Resourse: http://bitlaw.com/source/tmep/