MERELY ORNAMENTAL TRADEMARKS: A GUIDE FOR MERCHANDISE BRANDS

Understanding Merely Ornamental

When the USPTO describes a trademark as "merely ornamental," it means the mark isn't functioning as a trademark but rather just as a design on a product. This typically occurs in merchandise businesses where a name is simply placed on t-shirts, merchandise, swim shirts, shorts, or shoes without functioning as a brand. While this can be overcome when you're actually in the merchandise sales business, it becomes more challenging when it's just a slogan or brand not primarily engaged in merchandise sales.

Overcoming Merely Ornamental Status

To overcome a merely ornamental designation, businesses must provide better specimens showing how the product is being sold, ensuring proper tag placement, and demonstrating that it's not just a word or slogan but an actual brand representing the company. For existing brands with acquired distinctiveness, they can file new applications for merchandise sales as an ancillary trademark registration, provided they're actually selling the goods rather than just giving them away as promotional material.

Class 25 and Proper Branding

Class 25 specifically relates to clothing items. Proper branding requires placing the mark in specific locations, typically on tags or discretely on the garment, rather than prominently across the front. For example, Hanes places its brand on the tag to indicate it manufactured the shirt, regardless of what design appears on the front.

Copyright vs. Trademark Protection

It's important to understand that copyright and trademark protection are two distinct areas of IP protection. Trademarks protect items for sale, services, and brand recognition, while copyrights protect tangible creative works. Copyright protection begins the moment a work is created in tangible form, while trademarks require registration for maximum legal protection and recognize a brand's goods or services.

Legal Advice for Merchandise Brands

For businesses serious about turning their merchandise into a real brand, it's crucial to first examine and protect the core business before branching into merchandise. Ensure the base intellectual property is secured in the primary business sphere before expanding into merchandise protection, unless the primary business is merchandise sales.