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It Looks Like a Duck, It Quacks Like a Duck, But It… Might Not Be a Duck?

by | Jul 19, 2018 | Intellectual Property, Trademark

Crystal Broughan is grateful that E. Paul Cuffe, our summer guest blogger and a summer law clerk at Marks Gray, P.A., co-authored this article. 

Many are familiar with the duck test. It’s a popular reasoning exercise where habitual characteristics are used to identify unknown subjects: if it looks like a duck, swims like a duck, and quacks like a duck, then it probably is a duck. Unfortunately, this test may not prove helpful when applying for a trademark.

Many business owners file trademark applications because they think they have a trademark. Then they become irritated with the United States Patent and Trademark Office (USPTO) when their marks are rejected. Many of the rejected marks appear similar (although not quite the same) as registered trademarks, causing frustration for anyone unfamiliar with the trademark application process.

The USPTO is a federal government agency that determines your company’s right to register your trademark with the federal government. An application may be rejected for a number of reasons. However, the most exasperating reason may be a rejection under “merely ornamental” grounds.

What Does “Merely Ornamental” Mean?

The purpose of a trademark is to identify the source of the goods or services for consumers. Historically, trademarks started when people began placing their brand or mark on goods they made by hand (i.e. knives, guns, pottery). However, in today’s world, applicants sometimes seek to register a symbol that is used in a “merely ornamental” or “merely decorative” context as opposed to as a source identifier.

“Merely ornamental” or “merely decorative” refers to a mark used in a decorative or ornamental context on the goods, rather than used to identify the source of the goods.

For example, the USPTO refused to register an iteration of Lululemon’s wave trademark displayed on the front of a hoodie in an enlarged form. The USPTO reasoned the design was not specific enough to perform a source identifying function and just served to decorate the clothing.

The USPTO determines whether a mark is “merely ornamental” by analyzing a variety of factors relating to a mark’s commercial impression (how a consumer would view the mark – as a source or as a decoration). These factors include the mark’s size, location, and dominance.

Each mark’s registration is then determined on a case-by-case basis. A large depiction of a small design, such as the Lululemon hoodie design, may be more likely to be seen as a purely decorative or ornamental feature of the goods, even though it appears to be Lululemon’s registered trademark.

What to Do If You Receive a “Merely Ornamental” Denial

Feeling discouraged or confused? All is not lost!

It is possible to overcome a “merely ornamental” denial. The applicant may appeal the decision and argue the design is inherently distinctive or show the design has been used in a non-ornamental manner for other goods and services.

Some evidence that could be used to support a claim of distinctiveness can include:

  • advertising and promotional materials that specifically promote the applied-for mark as a source identifier;
  • resources devoted to the applied-for mark’s promotion;
  • and consumer statements indicating the applied-for mark’s recognition as a trademark.

Additionally, a claim of distinctiveness can be strengthened by “tacking on” the applied-for mark to a registered mark. Note, however, the marks must be the same, even if the uses differ.

Applying for a trademark can be a frustrating process, but it does not need to be. The Marks Gray Intellectual Property team can assist you every step of the way, ensuring your business is able to “have its ducks in a row” when filing any trademark application with the USPTO.


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