What happens when you connect the easy trademark docketing & defense system with the undisputed leader in legal practice management? Seamless trademark management bliss! When Name Warden and Clio join forces, everybody wins. We recently hosted a webinar with our friends at Clio to show users how it works. Check it out below.
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‘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.
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.
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:
Remember, it’s all about the mark being perceived as an identifying mark of the manufacturer.
Quick tips
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.
Client intake, time tracking, deadlines, filings, defense monitoring… there’s a lot that 
Trademark Attorneys have to keep track of on a regular basis. It takes serious organization skills to be an effective Trademark lawyer – or does it? It’s the 21st century! Have you done any research on new law practice technology? Tech-savvy attorneys turn to web based tools to help them manage their law practice effectively and efficiently.
Are you harnessing the power of law practice technology to manage your law practice? We rounded up some of the best software systems and online tools to help you better manage your law practice, including (naturally) your trademark matters.
All-in-one software
Law practice technology makes management so much easier with software that integrates things like Quickbooks and calendars, and offers all-in-one solutions. A solid law practice management system will include everything from case management to time tracking, billing, reporting, and accounting. Here are a couple to check out.
Research/Note taking
You don’t always have the luxury of researching and taking notes from your office. These apps come in handy.
Time Tracking
If you have law practice management software, you likely have a way to keep track of your time. But what about on the go when you are away from the office? Here are two standalone timekeeping apps to check out.
Document Management
Do you have one central location for all of your documents? Can that location be accessed from the cloud by yourself and other staff members? We live in a mobile world, your documents need to be accessible to more than just your office computer. Here are some great programs that can help.
Trademark Docketing and Defense
Are you keeping track of your marks and meeting your filing deadlines? Don’t rely on your calendar, rely on NameWarden. All your marks and deadlines are in one place and the set-up is a breeze.
Potential Client Management and Client Intake
How do you keep up with potential clients live before they are actual clients? How do you send out engagement letters, receive electronic signatures on them, and pull a matter from potential to actual? Lexicata is a targeted service for law firms that is gaining users and fans.
Billing
Do you take online payments or are you still making clients write and mail checks? Here are some great options for taking payments online and managing your accounting.
Let these tools work for you and you’ll save time and money. What tools do you use? We’d love to hear from you!