We work with lots of different types of clients but probably the most popular category of clients are those folks interested in registering their apparel brands. It makes a lot of sense too. Apparel is big business and with today’s technology you can have a website with your custom style/sized clothes where another vendor manufactures and ships the clothing to the purchaser. Easy peasy.
But registering a trademark for apparel is another thing altogether. There are some serious pitfalls for the inexperience applicants. In this post we will cover applying for an apparel trademark and the specific issues clients regularly face.
- Word Mark or Design Mark?
- Searching the USPTO for Apparel Brands
- You Are Also a Service Provider
- The USPTO Rejected My Apparel Specimen!
- Enforcement
1. Word Mark or Design Mark?
Word marks protect the letters, numbers, or characters of a trademark without any claim to color, font, design, or style. Generally they are what we recommend client file if feasible. They’re Plain Jane. They are also the most bang for your buck since so long as you continue to use the name, you’re protected for the life of the registration, despite changing logos. But with apparel, the story is a little different.
Apparel clients are all about style. Design sense is incredibly important for these clients and the logo on the apparel is generally of the utmost importance. That’s why we often opt to protect the logo in addition to the word mark. Design marks protect the logo, which may include the words in that logo. We generally file the trademarks as black and white with no color claim. That way the owner can use the logo in different colors on a variety of backgrounds. So what’s our trademark recommendation for apparel clients? File a design mark and possibly a word mark.
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2. Searching the USPTO for Apparel Brands
All applications at the USPTO fall into one of 45 classes of goods and services. Apparel is class 25 and it protects everything from shirts to shoes to formalwear. It’s a huge category. So when we search the USPTO we are keyed in on 25 but that’s not the only place we need to look. The USPTO treats apparel and jewelry as highly related. Jewelry is class 14. If an apparel brand applies in 25 but there’s a similar brand registered for jewelry in 14 there’s a good chance of a likelihood of confusion office action. And nobody likes that! Beyond 25 and 14 you need to also consider class 35.
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3. You Are Also A Service Provider
If you have an apparel brand you are likely not just a manufacturer, you’re also a service provider and likely to file another application in class 35. 35 includes services like retail and online retail store services. Many clients who sell apparel also choose to protect their online stores. Similar to jewelry, if an apparel applicant applies to protect the apparel in 25 but there’s an online store registered for apparel in 35 there’s going to be trouble. A registration strategy we often employ to save clients money is to file a design mark in 25 for the apparel and a word mark to protect their website in 35. Best of both worlds while saving legal and government fees.
4. The USPTO Rejected My Apparel Specimen!
We see office actions all the time from clients who incorrectly filed a specimen for their apparel brand. A specimen is proof that you’re using the trademark. It’s a bit technical but for most clients a specimen is a picture of the trademark on the product or used in conjunction with the service (usually a website screengrab). Apparel is a bit trick because the USPTO is very strict about the applied for trademark being used as a “source identifier” as opposed to mere decoration. Routinely our firm will get a call from a client who received an office action because the USPTO didn’t like their apparel specimen. The specimen they submitted was a picture of the brand in big font across the front of the shirt. That’s usually called decoration or ornamentation. What the USPTO really wants to see is a picture of the trademark placed on the upper left breast pocket area of the shirt just like you’d see on a Ralph Lauren Polo shirt. Call the USPTO old fashioned! Or you could snap a picture of the apparel with a hang tag displaying the trademark. Either way it can be frustrating for clients. In reality it’s an easy fix for a trademark attorney.
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5. Enforcement
Congrats, you received a trademark registration for apparel. Now what? Your trademark rights are limited only by how strong or weak the trademark is. For a really unique trademark the sky is the limit. If there’s multiple people using similar brand names tread carefully before you send a take down notice Amazon or social media. You don’t want to run the risk of challenging the use of someone else’s unregistered rights. They may decide to try and cancel your trademark. Our advice is to always speak with a trademark attorney to ensure your rights are senior and superior to the junior infringer.
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That’s A Lot! But Mighty Marks® Can Help
Our online trademarking service helps startups and small businesses obtain federal trademark registrations.
Learn more at www.mightymarks.com.
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Image: Unsplash.com
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.
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