Many of us express ourselves through style. For example, some of us wear shirts with funny sayings, and some of us drink coffee out of mugs with meaningful quotes. Naturally, many people want to protect sayings that they come up with so that they could be the only one to put certain sayings on certain items (usually t-shirts). How can you protect these sayings? Can you trademark sayings on shirts/mugs/accessories? Depends on whether these sayings can serve as a source identifier.
If you decide to file a trademark application, there are two main issues to consider:
When evaluating a mark that appears to be ornamental, the size, location, dominance, and significance of the alleged mark as applied to the goods are all relevant factors in determining the commercial impression of the applied-for mark. See, e.g., In re Lululemon Athletica Can. Inc., 105 USPQ2d at 1687 (quoting In re Right-On Co., 87 USPQ2d 1152, 1156 (TTAB 2008)); In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988); TMEP §1202.03(a).
With respect to clothing in particular, consumers may recognize small designs or discrete wording as trademarks (like a little Polo logo on a shirt pocket or chest area), rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt. See TMEP §1202.03(a). Consumers may not perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front of a t-shirt. See In re Pro-Line Corp., 28 USPQ2d at 1142 (holding BLACKER THE COLLEGE SWEETER THE KNOWLEDGE centered in large letters across most of the upper half of a shirt, to be a primarily ornamental slogan that was not likely to be perceived as a source indicator); In re Dimitri’s Inc., 9 USPQ2d at 1667-68 (holding SUMO used in connection with stylized depictions of sumo wrestlers and displayed in large lettering across the top-center portion of t-shirts and caps, to be an ornamental feature of the goods that did not function as a trademark); TMEP §1202.03(a), (b), (f)(i), (f)(ii).
Thus, if the mark is located where ornamental elements often appear, or if the mark is displayed in a relatively large size on a product such that it dominates the overall appearance of the product, the mark would appear to be a design element that is merely decorative and has little or no particular source-identifying significance.
If you receive an "ornamental rejection," during examination, trademark applicants may overcome the rejection by satisfying one of the following options:
Ultimately, we go back to the basic rule of trademarks (in whatever form) serving as source identifiers for them to be registrable.