Archives For apparel

How do I trademark my clothing brand?

November 18, 2021 — Leave a comment

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.

  1. Word Mark or Design Mark?
  2. Searching the USPTO for Apparel Brands
  3. You Are Also a Service Provider
  4. The USPTO Rejected My Apparel Specimen!
  5. 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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Can a Fashion Designer Trademark its Apparel?

March 17, 2015 — 2 Comments

Fashion and apparel designers are always creating new looks. And many look to trademark laws to protect their designs, but they often fall short of being able to use trademark laws to protect those designs.

In this week’s post we want to explore options for designers to use trademark laws to protect their creative works.

Protection only extends to source identifiers

As we have covered here before, the Trademark Act primarily serves to protect names, logos, and other source identifiers (read more about that here). However, there is also “Trade Dress” protection, which extends to designs, packaging, and the specific appearance of fashion apparel. Of course, as with a trademark, the trade dress must serve as a source identifier in order to receive protection.

A great way to think about these two elements is that tags and brand names are likely protectable as trademarks, while unique aspects of a piece of clothing might be protectable under trade dress.

Fashion apparel must obtain secondary meaning

The important thing to remember here is that under the Trademark Act, trade dress can never be inherently distinctive. Therefore, it can’t serve as a source identifier on its own.

However, a doctrine called “secondary meaning” can still allow designers to gain protection under the Trademark Act. Secondary meaning means that, after some time period of actual use consumers begin to recognize your as a source identifier, your design may be protected under the Trademark Act. The down side is that such consumer recognition can take decades to achieve.

Case in point, the famous shoe designer Christian Louboutin began using bright red soles on the bottom of his shoe designs to identify his company as the designer of the shoes. It wasn’t until 2008, however, that they were able to prove secondary meaning and thus obtain trademark protection. The ability to protect his trade dress was even affirmed by a Federal Court of Appeals.

What to do in the time between use and acquiring secondary meaning

Designers might be left wondering how to protect their trade dress before acquiring secondary meaning. The good news is that other intellectual property protection can help. Most specifically, design patents and work well to secure your rights for certain time periods (usually 14 year) and copyrights may be able to assist with protection of any original works you create.

What to do next

The end result is that designers should consider all options when trying to protect their designs: trademark, trade dress, copyright, and patent rights.

When it comes to the trademark elements, be sure to check out MightyMarks®, a leading online digital trademarking firm with low fixed fees for applications and appeals.

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Image: Thinkstock/VvoeVale
*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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