Is Your Cannabis “Trademark Use” Merely Ornamental?

Home | Canna Law Blog | Is Your Cannabis “Trademark Use” Merely Ornamental? The notion of ornamental trademark use is foreign to many cannabis businesses. This is unfortunate, because it’s an important issue to understand in the cannabis industry, where the only federal trademark protection we can obtain is for ancillary goods and services. (See here for the limitations of federal trademark protection in the cannabis industry.) The issue of ornamental use comes up frequently in the context of trademarks for apparel. The United States Patent and Trademark Office (USPTO) may reject a trademark application if the specimen indicates that the use of the mark is merely ornamental or a decorative feature on the goods and does not function as a trademark to indicate the source of the goods. Here is an example of ornamental use provided by the USPTO: “[A] slogan prominently displayed on the front of a t-shirt may be considered merely ornamental use and not trademark use. That is, most purchasers of the t-shirts would not automatically think the slogan identified the source of the goods but would view the slogan only as a decoration on the goods.” Of course, not everything displayed on the front of a t-shirt would be considered ornamental and be ineligible for trademark protection. There are a number of factors an examining attorney will consider in determining whether a logo is ornamental or functioning as a source-identifier. The USPTO has explained that, “a small, neat, and discrete wording/design located on the pocket or breast portion of a garment (for example, a small design of an animal) may create the commercial impression of a trademark, whereas a larger depiction of the same wording/design prominently displayed across the front of a garment may be more likely to be seen as a purely decorative or ornamental feature of the goods. The size, location, dominance, and significance of your mark as applied to the goods are factors used to determine whether your mark functions as a trademark to identify the source of your goods or is merely ornamental. Although there is no definitive method or place to affix a mark to the goods, the location and size of a mark on the goods is part of the environment in which the public perceives the mark and may influence how the mark is perceived.” It is also important to keep in mind that common expressions and symbols (like the peace symbol or the phrase “Have a Nice Day”) are normally not the type of matter perceived as a trademark. There are three ways in which an applicant can overcome a refusal based on ornamentality: By proving inherent distinctiveness; By establishing acquired distinctiveness; or By showing that the mark is registered for other goods or services, and thus that the applied-for mark serves as a secondary source indicator. It is possible for an ornamental design to be inherently distinctive if its primary function is to identify the source of the goods, with its ornamental aspect being only incidental. In building your cannabis brand, it is important to pursue a trademark strategy that does not open any of your marks up to refusal for merely ornamental use. If you intend to pursue trademark protection for ancillary goods like apparel, be certain that your mark is functioning as a source-identifier for that clothing, and isn’t just ornamental in nature. We’ve seen many instances recently of trademark applications that appear ornamental, and those applications will likely be vulnerable to rejection or challenge. Check Out Our Cannabis Law Services Share Twitter Facebook LinkedIn E-mail Comment Fred Rocafort Fred leads Harris Sliwoski’s intellectual property practice and is the coordinator of the firm’s international team. Much of Fred’s practice consists of helping cannabis businesses protect their brands. He also works with entrepreneurs and companies entering the Web3 space, a new frontier for IP law. Prior to joining Harris Sliwoski, Fred worked overseas for more than a decade, in both government and private sector roles. Fred is a regular contributor to the award-winning China Law Blog and Canna Law Blog. Fred began his career overseas as a U.S. consular officer in Guangzhou, China, where he advocated for fairer treatment of American companies and citizens in China and for stronger intellectual property rights enforcement. After entering the private sector, Fred worked at a Shanghai law firm as a foreign legal advisor and later joined one of the oldest American law firms in China, helping foreign companies navigate the Chinese legal environment. He also led the legal team at a Hong Kong-based brand protection consultancy, spending most of his time out in the field, protecting clients against counterfeiters and fraudsters in Greater China, Southeast Asia and Latin America. In addition to his IP work, as a native Spanish speaker, Fred works closely with different Harris Sliwoski teams on Latin America and Spain matters. Fred also provides advice to cannabis industry participants and other businesses on import and export transactions. Fred is an ardent supporter of FC Barcelona—and would be even in the absence of Catalan forebears who immigrated to Puerto Rico in the mid-1800s. Harris Sliwoski Attorney Read more posts [email protected] Read More Intellectual Property/Branding, Legal Issues Related Posts September 25, 2026 DEA Enforcement in a Changing Cannabis Landscape: Rescheduling, Hemp, and What Comes Next September 17, 2026 The Supreme Court May Decide if Cannabis-Related Residency Requirements are Unconstitutional September 16, 2026 A $31.8 Million Cannabis-Related Verdict That a Federal Court Wouldn’t Enforce September 15, 2026 Jason Adelstone Moderates Federal Cannabis Policy Discussion at IgniteIt Denver September 11, 2026 Medical Marijuana in Schedule III Survives Its First Major Challenge September 10, 2026 How to Acquire a Colorado Cannabis License September 4, 2026 The Intoxicating Hemp Products Ban Was Delayed a Month. Now What? August 31, 2026 Is the Global Shift to the Right Threatening International Cannabis Reforms? August 28, 2026 Oregon Cannabis Roundup: Fall 2026 August 26, 2026 Five Bills Every California Cannabis Operator Needs to Track in 2026 August 14, 2026 California Cannabis Contracts After Rescheduling: Why Your Contracts Need a Second Look August 4, 2026 DCC License Conversions After Rescheduling: How and When to Split A/M Licenses in California August 3, 2026 The Contradictions of Cannabis Law: From the United States to International Treaties July 28, 2026 What California Operators Must Do After Rescheduling: DEA Registration, License Restructuring, and 280E July 24, 2026 Medical Marijuana Schedule III Litigation: The D.C. Circuit's First Major Test Leave a comment Cancel reply