Archives For uspto trademark registration

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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Trademark Law 101: Everything You Need to Know About Trademark Registrations

January 26, 2016 — Leave a comment

Understanding how to protect your brand and avoid infringing trademarks owned by other businesses can be complicated at times. But, for every startup and small businesses out there, understanding trademark law is critical to building a successful brand.

In this post we will cover a lot of ground and focus on the six topics below.

  1. Trademark Law
  2. Don’t Pick a Generic or Descriptive Mark
  3. Researching Trademarks
  4. Trademark Applications
  5. Post-Application Filings
  6. Post-Registration Filings

1. Trademark Law

A trademark is a name, slogan, or other mark that serves as a source identifier. That means consumers can purchase a good or service and rely on the trademark attached to it as an identification of who is selling that good or service.

To get trademark rights, you first need to use your mark in commerce. Once you use your mark in commerce, you gain a “common law” trademark that you can enforce in court. Of course, it is always a good idea to register your trademark with the United States Patent & Trademark Office for better protection. For example, a federal registration can help you protect your mark throughout the entire country rather than just in the geographical areas in which you are using your mark.

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2. Don’t Pick a Generic or Descriptive Mark

When picking your name, be sure to pick something that is not generic or descriptive. That’s because generic and descriptive marks cannot be protected. As an example, if you want to open a barbecue restaurant, don’t call it BBQ Shack because you will not be allowed to own those words in connection to the sale of barbecue. If you could, other companies would be prohibited from using those words to describe their business.

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3. Researching Trademarks

Before you use a mark in commerce (and certainly before you file a trademark application) you should do some research to see if anyone else is using the mark in association with similar goods or services. That’s because, generally speaking, the first person to use a mark will be deemed the owner of that mark.

You should look for anyone using an identical mark or any mark that is confusingly similar to your mark because trademark protection extends to any mark that might confuse consumers. Further, your search should mostly focus on other marks being used on similar goods and services to your goods and services. That’s because trademark rights are specific to a type of good or service (think Delta Airlines v. Delta Faucets).

Once you have confirmed that no one else is using the mark you want to use, you can move on to an application.

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4. Trademark Applications

When you are ready to file your application with the USPTO, you can do so online. While anyone can file for an application, using an attorney is highly recommend (read more on that here). The application process includes completing the form, identifying the goods or services you will sell under your mark, submitting a specimen showing your use of the mark in commerce, paying the application fee, and submitting your application.

We’ve covered all of those topics a lot on this blog. Read more about them at the links below.

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5. Appealing a Denial

After you file your trademark, you may receive various correspondence from the USPTO (and you’ll probably get some spam too). Some of those communications will be simple requests to disclaim a portion of your mark (meaning you won’t claim protection for that word) or to correct your identification of your goods or services.

Unfortunately, your application may be denied. If that happens, you should read out post What You Should Do If Your Trademark Application Is Denied. Sometimes you can overcome the denial, sometimes you can’t.

If you don’t appeal the denial, or if your denial is not overturned on appeal, your application will be deemed “abandoned.”

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6. Post-Registration Filings

If your application is approved, you will receive a federal trademark registration certificate. But don’t forget to keep up with post-registration filings. The most important filings occur five years after your registration date, ten years after your registration, and every ten years thereafter. We’ve covered this on our blog before and you can read more at the links below.

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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: Adobe/Rawpixel.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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