With regard to ornamentation

One of the more common reasons that an application to register a trademark is rejected is that the mark as it is shown on the specimen is merely ornamental. This common basis for rejection is often found when applicants file an application to register a trademark on their own, pro se, without the aid of an experienced trademark attorney. Note that this is typically an issue of the manner in which the mark appears on the specimen and not a issue with regard to the mark itself. However, this can be fatal to the application if the applicant did not have appropriate specimens at the time of filing the application.

A mark will be deemed to be merely ornamental if the mark appears on the specimen as a merely decorative feature, and does not identify and distinguish the applicant’s goods. As such, the decorative matter does not function as a trademark.

This rejection is most often seen when the specimen provided is a t-shirt or article of clothing and the mark is splashed in large font on the front of the shirt.  This issue is not limited to clothing, however. The issue of ornamentation may arise when the application to register the mark is in connection with mugs, printed matter, or other goods.

As such, it is important to be sure that the mark is used as an identifier, i.e. a brand name or the like, or the application might be rejected. Worse, it may not be a rectifiable issue.