Merely Ornamental? When a Decoration Is Not a Brand

‘Tis the season for merchandising! Your house, office, and yard may be full of holiday ornamentation but trademark applicants beware.  If something is deemed to be “merely ornamental,” that’s grounds for the USPTO to refuse your application to register your mark.  

Ornamentation is an issue that trips up a lot of applicants, especially for t-shirts, coffee mugs, bumper stickers, and other printable merchandise.  The issue comes down to whether the wording or logo is being used as a trademark.

“Merely Ornamental” Refusal 

A “merely ornamental” refusal happens when the USPTO refuses registration because the sample, or “specimen” is deemed merely as an “ornamental or decorative feature” on the goods rather than as a trademark to indicate the source of goods.

The basic concept here is this: just because you have shirts made up with your logo on it does not make you an apparel company. Say for example Name Warden had shirts made to go to a conference. Because Name Warden is not a t-shirt company, the mark on the shirt is merely ornamental.  We have not become an apparel company, so would not be able to get our mark registered in Class 25 for apparel.

Trademarks have to do with the brand of a product and its maker, and the real point of reference is not the front of the shirt but inside the back collar or on a tag hanging off of the sleeve. The size, location, dominance, and significance of your mark as applied to the goods are all factors in the USPTO’s determination of whether your mark functions as a trademark.

If, for example, you used a small insignia or shape on the breast pocket of your shirts, that could be considered a trademark because it creates the “commercial impression” of a trademark. If that same symbol was enlarged and placed across the front of the shirt, it could be considered ornamental.


How to Avoid a Refusal

The USPTO will refuse your mark if it is deemed merely ornamental or decorative. In their words, “when use of your mark does not clearly identify the source of your goods and distinguish them from the goods of others,” the mark is considered ornamental.

Examples of Ornamental use include:

  • A quote across the front of a t-shirt
  • An image on the main surface of a shirt, hat, or bag
  • Embroidery embellishments
  • Floral patterns
  • Everyday expressions or symbols

Remember, it’s all about the mark being perceived as an identifying mark of the manufacturer.

Quick tips

  • Consider the placement of your mark. Location plays a huge factor in the USPTO’s decision. Pockets, breast areas, and tags are places where trademark use is expected.
  • Size and dominance of the mark matters. Small wording or design features are usually an indication of a brand mark and not decoration.


What to do when it happens

If you receive an Ornamental refusal, all hope is not lost. You can use the Trademark Electronic Application System (TEAS) to respond in either a Non-final Office action or a Final Office action.

You can also submit a substitute specimen – basically an example of the product in a different, non-ornamental form. Here’s the thing: you need to be able to prove that the substitute specimen(s) “was/were in use in commerce at least as early as the filing date of the application, prior to the filing of the amendment to allege use, or prior to the expiration of the filing deadline for a statement of use,” according to the USPTO.

The bottom line is when it comes to trademarking consumer goods, it’s not about design or content, it’s about branding of the company that makes the goods. The mark needs to identify the manufacturer of the product, not boldly display a logo or design. If you’re a t-shirt manufacturer, add your mark to the tag, pocket, or other brand-communicating location. If you’re a trademark docketing and defense service, slapping your logo on a shirt does not make you an apparel company. And, if you have trademarks to file, don’t do it the hard way. Use Name Warden to automatically file, register, and monitor your marks.

Drone Trademark Filings: Droning On or Taking Flight?

In the past couple of years, drones and related legal issues surrounding drones have been hot topics. Major companies like Amazon and Google are coming up with innovative ways to use them, drone enthusiasts are forming groups and meetups, and this past holiday season, they were high on many lists. In fact, 1 in 5 people said they wanted a drone for Christmas this past holiday season, and it was estimated that 1.2 million Americans found them under the tree on Christmas morning. (How many of them were found stuck in some other tree later that day? We don’t have numbers on that.)

Meanwhile, the Federal Aviation Administration and local and state authorities have been struggling to figure out how to regulate, or how not to regulate, drone usage.

As the business world figures out how it will use drones to increase efficiencies, add a new marketing gimmick, or develop new and better content and data from overhead, drones will continue to grow in use, sales, and legal questions.  Here at Name Warden, we work with trademarks.  So we were interested in whether there had been a big uptick in drone trademark filings as new companies and new products got into the act.  We’ve pulled and parsed the USPTO data on drone trademark filings over the years, like we’ve done previously for the uptick in craft beer branding, and for vaping products.  Here’s what we found.

Drones flew into the scene earlier than you think

The first mention of “Drone” was in 1958! SN: 89000009 RADAR TRACKING AND CONTROL SYSTEM FOR COMBAT SURVEILLANCE DRONES 

Most of the filings we found from 1958 until about 1991 were for military purposes. That’s because the first drone was created for military purposes (more on that below).

Drones can do what?

We learned that the term “drone” does not necessarily refer to flying drones. Here are two examples:

  • SN: 78241320 “industrial drones for loading and unloading materials”
  • SN: 85078396 AQUA DRONE

Buzz off!

We also found filings for bee products in 1984.


The word drone in Old English is actually a term for the male honeybee. The first use of the term drone in aviation was in 1936. U.S. Navy Commander Delmer Fahrney was directed to develop target airplanes that were pilotless. The project was inspired by the Royal Navy’s target aircraft, “Queen Bee”. Target airplanes were used in World War II as practice targets for fighters and antiaircraft guns. In the bee world, drones have sort of a mindless existence. The naming of these Remotely Piloted Vehicles (RPVs) was a nod to that of drone honeybees, who seem to have no mind of their own.

Drones in Hollywood

Drone trademark filings for equipment used in movies started popping up in 2007. A typical product description read “Motion picture and television film production, namely, providing remote controlled drone helicopters equipped with specialized cameras for filming purposes; Aerial photography.”

Into the hands of the people

It’s not until 2010 you see marks for drone sales, in the sense that we now think of the word “drone,” in particular with filings for retail distributorship services. This is where the uptake in filings really begins. Here’s a chart showing number of filings per year from 1958 until now.


Here’s a closer look at filings starting in 2010 with the deal development of retail channels for remote-controlled “drone” aircraft.


The big dip this year is because it’s early yet in 2017, with 34 filings so far in 2017 as of the date we collected our data. Combing through filings we see drones for photography, toys, education, surveillance, agricultural surveying, delivery, military use, medical purposes, accessories such as landing pads, drone camps, and catchy phrases like “Do not drink and drone.” The future of drones is wide open!

Watch What You Tweet: Hashtag Trademarks are Soaring

The 2016 Summer Olympics was a wake-up call to marketers and business owners who thought they hashtag-trademarkscould get in on the Olympic buzz by using the popular Olympic hashtags on social media. They may have joined the conversation, but they probably also found a cease and desist letter or email for using trademarked hashtags on their business social media accounts. That’s right, hashtag trademarks are a thing.

2016 is not the first year that hashtags have been trademarked, but it seemed like the first major instance of a hashtag trademark owner cracking down. This piqued our curiosity, so we looked into the filing trends for terms starting with the pound sign (#). We found filings all the way back to 1963! No, they weren’t using hashtags in 1963, those filings were for terms like #1, and a few were for items like #$!? (cartoon cursing?).

The first online use of the pound sign was in the 1990s by IRC (Internet Relay Chat) users. It was used to categorize items into groups. The hashtag as we know it now was invented in 2007 by Chris Messina, who suggested that the symbol be used to organize groups on Twitter. The tweet looked like this:

?how do you feel about using # (pound) for groups. As in #barcamp [msg]??

The purpose was to organize and gather discussions going on at a technology event called Barcamp.

The hashtag has since been used by most of the social media platforms out there and is an important part of every business’ marketing strategy – hence the reason people started trademarking hashtags.

We wanted to see the trademark trends for hashtags so we limited our search to # followed by a letter (to remove all of the non-hashtag “#1” type things), and cut the timeline to 2007. Here’s what we found.


There have been 452 hashtag terms filed through Day 251 out of 366 days in 2016. If we take that out to the full year, we are on pace for 659 in 2016. Here are some hashtags you might recognize:

  • #Girlboss
  • #HowDoYouKFC
  • #BeYou
  • #RunThisTown
  • #SupportLocal
  • #WalmartElves
  • AT&T Presents #BeTheFan
  • #SrirachaGouda
  • Playboy #Generation
  • #LikeAGirl
  • #IceBucketChallenge (also #ALSIceBucketChallenge)
  • #ThrowbackThursday
  • #CokeCanPics
  • #SmileWithACoke
  • #LifeonMars
  • #RioReady
  • #LoveIsLove
  • #BlackLivesMatter
  • #PaylessShoeSource

It’s clear that hashtag trademarks are becoming more prevalent so watch what you hashtag and make sure your clients start trademarking their own branded hashtags.