A trademark can be made of words, letters, symbols, designs, pictures, colors, sounds and smells. The key to obtaining an enforceable trademark is that the chosen mark must identify the source of goods or services. A mark may be aesthetically pleasing—the best design marks are. However, if the design is purely ornamental, then it does not function as a trademark and cannot be registered on either the principal or supplemental register.
Whether decorative matter can receive trademark rights is determined by how the consuming public views the design and if they view it solely as decoration or also as an indicator of source.
When registering a decorative design with the U.S. Patent and Trademark Office, as with other types of marks, a trademark examiner will judge the mark on its distinctiveness—whether it is inherently distinctive or, if not inherently distinctive, whether it has acquired distinctiveness with use.
To determine whether a mark is inherently distinctive, the examiner will consider the commercial impression made by the design. Commercial impression is based on the notion that consumers are conditioned to regard certain design features as indicators of source while other design features are meant to be decorative.
A trademark examiner will analyze samples of the mark as used on the product and how the designation is actually used in the marketplace. For example, consumers may be more likely to regard a design on a label or on a hang tag as a source indicator while viewing the exact same design embroidered on a t-shirt as merely decoration.
Additionally, the more unique a design, the more likely it is to be considered inherently distinctive. Familiar symbols, on the other hand, such as a smiley face or peace symbol, or expressions, like the slogan “Once a Marine, Always a Marine,” will not be regarded by consumers as an indicator of source because they are commonly used in an ornamental manner and displayed on goods made by different manufacturers.