If trademark applications were Chinese food, the logo on the front of a shirt would be General Tso’s chicken. It’s what “Piano Man” is to the bar crooner—a fan favorite, a crowd pleaser. So it would make sense that familiarity with filing of trademarks would necessarily include familiarity with this particular process. After all, you wouldn’t open a pizza restaurant without access to pepperoni.
A hypothetical client comes into Brackett & Ellis with her tee-shirt design, which features a protectable trademark printed largely across the front of a shirt (similar to the stock photo above). We’ve all seen it. She says she wants to register the mark for clothing—and wants to keep costs and fees to a minimum.
Recognize that the trademark usage described is likely going to be refused as being ornamental. TMEP §1202.03 deals with ornamental refusals and specifies that, “Subject matter that is merely a decorative feature does not identify and distinguish the applicant’s goods and, thus, does not function as a trademark. A decorative feature may include words, designs, slogans, or trade dress. This matter should be refused registration because it is merely ornamentation and, therefore, does not function as a trademark, as required by §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127.”
Thus, placement of a company logo across the entire front of a shirt or the front part of a hat is likely to be subject to a refusal under Section 1, 2, and 45 of the Lanham Act. Why? Because consumers don’t know the image on the front represents a brand, until they’ve encountered it before and recognize it as the source of a good (in this case, clothing.) Stated another (and potentially less helpful) way, people don’t know you’re a brand, until they know you’re a brand.
There are, however, a few ways to overcome this refusal:
(1) Submit a different specimen that shows proper trademark use for the identified goods in International Class 025. These may include hang tags attached to clothing and labels used inside a garment. It may also include trademark usage placed on a particular good, in a fashion that does not make it decorative, informational, or ornamental (such as the POLO® figure on a collared shirt).
(2) Amend to the Supplemental Register, which is a second trademark register for marks not yet eligible for registration on the Principal Register, but which are capable of functioning as source indicators.
(3) Claim acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied for mark has become distinctive of applicant’s goods; that is, proof that applicant’s extensive use and promotion of the mark allowed consumers now directly to associate the mark with applicant as the source of the goods.
(4) Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof that the mark is already recognized as a source indicator for other goods or services that applicant sells/offers.
(5) Amend the filing basis to intent to use under Section 1(b), removing the requirement of the specimen at this time.
Each of these options has ramifications that will ultimately impact the strength and level of protection afforded your mark. Specifically, option 1—provide a new specimen—will allow you to move forward on the Principal Register. The level of protection of your mark will not be narrowed.
Pay particular attention to the second option, amendment to the Supplemental Register. This is an appealing option because it allows your application to move forward by overcoming the refusal and—as an extra benefit—you get to avoid publication. That said, the scope of protection afforded marks on the Supplemental Register is less than those on the Principal Register, so understand what you are getting before accepting this option. Ask questions of your personal attorney or the trademark examining attorney reviewing your application, so you know exactly what you are agreeing to.
Option 3, a claim of acquired distinctiveness under Section 2(f) requires (1) proof that you were using the mark in commerce with the goods in the applied for application for a period of five years or more, and that that use was continuous and substantially exclusive during that time; or (2) proof of the same mark for the same goods already on the Principal Register; or (3) actual evidence of acquired distinctiveness through the use of surveys, sales and marketing figures, etc. A 2(f) claim on the Principal Register provides a greater scope of protection than the Supplemental Register, but less than being on the Principal Register without the 2(f) claim. So once again, by agreeing to this amendment, you are narrowing the scope of your protection and ultimately reducing the value of your trademark registration.
Options 4 and 5, both allow you to maintain your registration “straight-up” on the Principal Register, without any concessions regarding its inherently distinctive nature. Both have specific requirements though, that may make one more favorable than the other. Option 4 requires you to show that you’re using the mark on some other goods or services in a non-ornamental manner. For example, if the applicant is, say, Cody Jinks, and the name on the shirt is the same, the applicant can show use of the mark with the services of playing live musical performances in International Class 041 or downloadable music files in International Class 009 to demonstrate non-ornamental usage. If the applicant is seeking to register multiple classes, this evidence allows all classes in the application to register on the Principal Register.
Accepting Option 5, amending the application to a Section 1(b) basis and then filing a Statement of Use under Section 1(d) after publication also allows your mark to stay “straight-up” on the Principal Register (meaning no 2(f) claim is required); however, this will require an additional expense of $100 per international class when filing the statement of use after publication and issuance of a notice of allowance.
The most common trademark applications are seemingly some of the most confusing, and each decision you make in pursuing your registration may ultimately impact (and perhaps reduce) the strength and value of the trademark registration you ultimately receive. Accordingly, it is important to consult with someone who knows the process and the ramifications of these decisions. If you have logos that need protecting, the attorneys of Brackett & Ellis, P.C. can help.