1202.03(e) Ornamentation with Respect to §1(b), §44, and §66(a) Applications
Generally, the issue of ornamentation is tied to the use of the proposed mark as evidenced by the specimen. Therefore, unless the ornamental nature of the mark is clearly apparent from the drawing and description of the mark, no ornamentation refusal will be issued in an intent-to-use application until the applicant has submitted specimen(s) of use with an allegation of use under §1(c) or §1(d)of the Trademark Act, 15 U.S.C. §§1051(c) or (d).
In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for the examining attorney to issue an ornamentation refusal where the proposed mark on its face, as shown on the drawing and described in the description, reflects a failure to function. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal in a §66(a) application for a mark comprising pocket-stitching design for clothing).