When college freshmen head to campus to begin classes, there’s one crucial campus bookstore purchase before class: a T-shirt with the college logo on it. This purchase wasn’t just a rite of passage; it also addressed an important concept in trademark law: the decorative use of a trademark on a T-shirt.
What is ornamental use?
Pursuant to Sections 1, 2, and 45 of the Trademark Act, the US Patent and Trademark Office (“PTO”) may refuse to register a trademark on the grounds that the material of the application is decorative and therefore cannot be used as a trademark because it is merely decorative. In re Peace Love World Live, LLC, 127 USPQ2d 1400 (TTAB 2018). Decorations can include text, designs, slogans or trade dress.
In deciding whether to deny registration of a trademark on the grounds that the applied-for mark is merely decorative, the PTO considers the following factors:
(1) The commercial impression of the trademark applied for;
(2) Relevant practices of the industry;
(3) Secondary sources, if applicable; and
(4) Significant evidence.
(Look TMEP § 1202.03 Wait.)
The “key question” as to whether the matter applied for has the function of a trademark is the commercial impression it makes on the relevant public, that is, whether the term for which registration is sought will be regarded as a sign identifying the source of the goods. ” In re Peace Love World Live, LLC127 USPQ2d at 2. If the commercial impression of the applied mark is purely decorative or decorative, then it cannot be used as a trade mark and cannot be registered in the main or supplementary register. Look J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 7:24 (5th ed. 2019).
How does TTAB handle decorative uses and T-shirts?
exist in Re-Olin., the Trademark Trial and Appeal Board (“TTAB”) recognized that a badge can be both decorative and source-identifying. There, the TTAB admits that “T-shirts are ‘decorated’ with a variety of badges, including university badges,” and that “if the decoration has no meaning other than mere decoration,” then the decoration is not considered a “mark of origin” . 181 USPQ 182, 182 (TTAB 1973).
However, “the ‘decoration’ of a T-shirt may have a special quality that inherently tells the buying public the source of the T-shirt, not the source of manufacture, but a secondary source.” ID. For example, “Illustration of NYU and the Hall of Fame” can be “as decoration on a t-shirt” or “provide advice”[s] Buyers see college as a second source for that shirt. ” ID. Therefore, the TTAB believes that when “considering the nature of the T-shirt”, decoration may indicate a secondary source. Notably, the TTAB limited its ruling to how to “use the mark on a T-shirt.”
Apply the principles set out in OlinU.S. District Court for the Northern District of California Macy’s Department Store v. Strategic Marks LLC According to the statement, the PTO “has long held that if a particular trim is indicative of a secondary source, such as the direct source of a shirt, rather than the direct manufacturer.” No. 11-CV-06198-EMC, 2016 WL 374147, in *3 (ND Cal. February 1, 2016). The court further explained in its judgment, “[f]Or for example, if you sell T-shirts with a stylized “Cal” logo, Champion may be the direct manufacturer, but UC Berkeley will be the second source trademark that authorizes Champion to produce and distribute shirts with the school’s registration. “
Likewise, the PTO has applied for Olin Other cases involving T-shirts and determined that “trademarks such as ‘EXPO ’74’ and ‘Mork & Mindy’ are protected marks of identifiable secondary origin, because while the marks are ‘certainly part of the decoration’, they ‘also show[d] source or originate from the owner [mark] Has the same meaning as the stylized ‘O’ in Olin. ID. (quote About Paramount Pictures213 USPQ 1111, 1113 (1982); at Re-Expo ’74189 USPQ 48, 49 (1975)).
What can an applicant do if the PTO refuses registration on the grounds of decoration and how does this apply in the context of college t-shirts?
If the PTO initially refuses to register a trade mark on the grounds of decoration only, the applicant can still qualify for registration on the main register by submitting a “certificate of secondary origin”. In other words, the applicant may submit items that demonstrate that their decorative items complement and promote the applicant’s other more essential goods and/or services. (Look “How to Determine Indicators to Use as Secondary Sources”).
The PTO clearly states that, in the context of university t-shirts, a university may register its university logo for T-shirts through the “secondary source” rule because “the sale of T-shirts is complementary to the university’s primary function of providing educational services.” (Look “How to Determine Indicators to Use as Secondary Sources”). Thus, if “the University receives a decorative refusal for submitting an image of a T-shirt with the University logo on the front, the university may submit evidence that it provides educational services under the same logo (such as pre-registration) to overcome the decorative refusal.” ID.
To sum up, certain ornaments on clothing manufactured by third parties can be registered for trademark use if the applicant can prove that the ornament is a secondary source. This enables the university to assert that its logo is a source identifier, making the logo eligible for apparel registration, even though the university itself does not manufacture the apparel.
Next time you visit the campus bookstore, it’s something to ponder!