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The Zest

Your Logo on the Front of a T-Shirt May Not Count as a Trademark

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"I filed for my brand on t-shirts and sent in a photo of the shirt. Why is the USPTO saying it's just decoration?" Because a large print across the front of a shirt usually looks like the design of the shirt, not the name of the company that made it. The USPTO calls that an ornamental refusal. The fix is usually about where and how the mark shows up on the product, not about the mark itself.

Here's how the rule works, and what to set up before the holiday print run.

What an ornamental refusal is

A trademark has one job: telling buyers who a product comes from. Federal law defines a trademark as a word, name, symbol or device used "to identify and distinguish" your goods from everyone else's and to indicate their source. On a t-shirt, the same words can play two roles. They can be the brand, or they can be the thing the customer is buying.

An ornamental refusal is the USPTO deciding your specimen shows the second role. The examination manual starts from a simple point: matter that is merely a decorative feature doesn't identify and distinguish the applicant's goods, so it can't register as a trademark.

It's a merch problem, because on merch the printed design is often the product: shirts, hats, mugs, stickers, tote bags.

Why the front of the shirt is the problem

Examiners look at the size, location, dominance and significance of the mark as it appears on the goods. The manual's example is a shirt. A "small, neat, and discrete" word or design on the pocket or breast area can read as a trademark, while a "larger rendition of the same matter emblazoned across the front" of the garment may be seen as decoration.

Size isn't the whole test, and the manual says so. The other big problem is messages. A slogan, a joke, a phrase of support or a common expression reads to most buyers as something the shirt is saying, not as the name of whoever made it. The manual collects cases refusing phrases like that on apparel, jewelry and gifts. In one, the Trademark Trial and Appeal Board held that I ♥ DC didn't work as a source indicator even when it appeared on a hang tag or label.

So there are two separate questions. Is your mark shown in a place and at a size where buyers expect to see a brand? And is it the kind of wording people read as a brand at all? A tag can fix the first. It can't fix the second.

What counts as trademark use on merch

The statute says a mark is used on goods when it's placed on the goods, their containers, displays associated with them, or "the tags or labels affixed thereto." The USPTO's specimen rule lists the same places: the goods, the packaging, labels or tags, and point-of-sale displays.

On apparel, that points to the spots where brands have always lived: a woven or printed neck label, a hang tag, a small mark on the chest, the packaging. The USPTO also notes that a product web page can work if it shows the goods with the mark and a way to order them.

None of this means you can't sell shirts with your logo blown up across the front. You can. It means that shirt, by itself, isn't the strongest proof that your logo is working as a brand.

The secondary source route

There's another way in. If your mark already identifies you as the source of other goods or services, buyers may read it on a shirt as a sign of where the shirt comes from. The USPTO's own example is a university that puts its name on t-shirts and relies on its registration for educational services.

The manual lets you show a secondary source in a few ways: a Principal Register registration of the same mark for other goods or services, non-ornamental use of the mark on other goods or services, or a pending use-based application for other goods or services. For a podcast, a coaching business or a café that starts selling merch, this can be the cleanest argument. Two limits apply. A string of ornamental uses on different products doesn't add up to a secondary source, and an intent-to-use application with no use filed yet doesn't count.

If the refusal has already arrived

An ornamental refusal comes in an office action, so it comes with a response deadline, and how office action responses work covers that clock. The USPTO lists the usual ways forward.

Submit a substitute specimen, like a photo of the hang tag or neck label. The catch: for an application based on current use, you have to verify that the substitute was in use at least as early as your filing date. Labels you ordered last week won't qualify.

Change the filing basis to intent to use. If the only problem is the specimen, you can switch bases and file proper proof of use later, with the fee that goes with it. Sending the same photo again just gets the same refusal.

Argue acquired distinctiveness. That takes real evidence that buyers see the design as your brand, such as your advertising and what you've spent on it, and statements from customers or retailers. The manual says five years of use alone isn't enough for ornamental matter.

Move to the Supplemental Register. It's an option, but a Supplemental registration doesn't carry the same legal presumptions as one on the Principal Register.

Before the holiday print run

If merch is on the calendar for the season, a few choices at the printer make a real difference. Put the brand name on a neck label or hang tag on every piece. Use a small, clean version of the mark on the chest or pocket area, even if the big graphic stays on the front. Photograph the tagged product when it ships, so you have a dated specimen showing the brand used the way the law expects.

And if your brand is a phrase, ask honestly whether buyers would read it as a name or as a message. That's the question an examiner will ask, and it's closely tied to what makes a name strong or weak as a trademark in the first place.

If you're planning merch under your brand and want it set up to support a filing, you can see how the search and filing packages work on the services page, and the FAQs page answers most of what comes up before a first call.

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(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

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This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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