Ornamental office action rejections are a common problem for DIY trade mark applicants. This type of rejection typically occurs when a proposed trade mark is merely a decorative feature of the applicant’s clothing, and therefore does not function as a trade mark to indicate the producer of the clothing.
For example, I often see DIY/Legalzoom applicants submit specimens of use for clothing products that show a proposed trade mark printed largely on the front of a shirt, where graphic designs and decorative features are generally found. This is an obvious mistake and avoiding this type of rejection is a no-brainer for a trade mark attorney.
Consumers generally recognize small designs or discrete wording as trade marks, especially when located on the inner clothing tag, on the pocket or breast area of a shirt, or on retail hang tags affixed to the clothing. Thus, if a trade mark application contains specimens of use along these lines it’s much more likely to be accepted.
There are several options when responding to an ornamental refusal that depend on the facts of the applicant’s situation and the proposed trade mark. Submitting an appropriate substitute specimen of use may be option if the proposed trade mark actually functions as a trade mark to indicate the source of the goods. If the trade mark is not currently functioning as a source indicator, but may become capable of functioning as a source indicator in the future, amending the application for for registration on the supplemental register may be an attractive option.
Amending the application filing basis to a 1(b) intent-to-use application may also be an option if an appropriate specimen of use is not available at the time of filing the office action response with the USPTO.
If you have received an ornamental refusal please contact us for a free phone consultation and we’ll discuss your options.