A trademark is a word, name, symbol, or device (or combination thereof) used by a person or which a person has a bona fide intention to use in commerce to identify and distinguish goods or services from those of others. A mark is used (a) on a good when placed on the goods or containers, tags, or labels and the goods are sold or transported in commerce or (b) on a service when used or displayed in the sale or advertising of the services and the services are rendered in commerce. A trademark functions to identify who is the source of the good/service, not what it is. For example, Band-Aid identifies who it is in terms of the generic category of adhesive strips.
This use must be with a purpose to identify a source, meaning that a consumer can determine the source of the goods or services based on such use. Unlike a piece of art that merely has aesthetic beauty, a mark must be used to identify source. It is possible that an original work of authorship – which may be subject to copyright protection – is used in a manner so as to identify source. However, if the work of authorship is perceived as merely ornamental, then such use does not trigger trademark rights.
Ornamental use is often an issue when a popular quote is prominently displayed across the front of a T-shirt. This type of ornamental use is perceived as decorative or expressive and not an identifier of the manufacturer of the brand of T-shirt. Ornamental use is not sufficient to trigger trademark rights. See In re Peace Love World Live, LLC, 127 USPQ2d 1400 (TTAB 2018) (registration of the mark “I Love You” denied for bracelets finding the phrase to be merely ornamental as a term of endearment and not serving to identify and distinguish the source of the bracelet).
The point is that to acquire rights in a mark, the use must function to identify the source and not merely be ornamental. In the event of an ornamental objection in any USPTO trademark prosecution, the applicant may submit a new specimen showing proper use on the label of the product, packaging, or advertising with an affidavit or declaration that the new specimen was in use as of the date the application was filed. See TMEP 904.05. Alternatively, the applicant may amend the filing to a 1(b) intent to use application.