Is Your Trademark “Merely Decorative?” -- Case Study: Life Is Good

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Is Your Trademark “Merely Decorative?” -- Case Study: Life Is Good

One of the issues that seems to trip up clothing sellers is the proper use of their trademark on the goods. Sellers of print-on-demand t-shirts, for example, are sometimes under the impression that merely printing their word mark or logo in large print on the t-shirt itself will magically create trademark “use” under the Lanham Act. They photograph the printed tee and attach the photograph to their trademark application as a “specimen” showing use of the mark on the goods.

To their shock and surprise, they often get an Office Action refusing their trademark, on the grounds that the proffered specimen shows use that is “merely decorative,” and not evidence of use of the mark in commerce as a trademark.

The “merely decorative” rejection is issued when the specimen -- that proof that you are currently using the mark in conjunction with the sale or offer for sale of the goods -- shows use of the mark in a way that tends to be more decorative than indicative of a source identifier. For example, use of the word mark printed in decorative script on a t-shirt will likely be refused as “merely decorative,” while use of the word mark in print on the inner garment label or a hangtag is more likely to be seen as a proper specimen for use of the mark “in commerce.” It’s important to know what the Examiner considers a good specimen; even if you’re using the mark properly, if you submit the wrong specimen, your trademark will be refused registration until such time as a proper specimen is submitted.

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