Fitness and lifestyle apparel brands are gaining popularity these days. It seems like the market is relatively wide open which is great for both businesses and consumers. And just like with any other business, protecting your apparel line is super important.
One of the best ways to protect a clothing line is through registration of your trademark whether that be a slogan, a one-word brand name, or even a logo found on all of your gear.
Working with clothing brands is a lot of fun, especially if the client is a well-established business ready to branch out into something new. But, filing a trademark for a clothing line isn’t as simple as it seems and there are some nuances to be aware of.
Ornamental Use…a no go
Most clients approach me with a picture of a t-shirt and their slogan or log slapped on top of it and say “lets trademark this!” Unfortunately, as far as the USPTO is concerned, that is not a registerable use of the trademark. This is what we call ornamental use or “merely ornamental” in the words of the examining attorneys.
If you submit an application for your clothing line with a picture of a t-shirt or hoodie bearing the name of your brand you will likely get an office action related to the ornamental use of the mark.
Ornamental use is similar to a decoration. Rather than acting as a trademark for the clothing line, it is really just part of the clothing. Remember, a trademark is used to indicate the origin of a product or service. In the USPTO’s eyes, if your desired mark is just printed on your clothing it is only acting as a design element, not as an indication of the source of the clothing. People often buy clothing based on what it says or looks like, however that does not mean they understand that the slogan or word is in any way associated with a brand.
How this affects your application-
In terms of your trademark registration, there are some things you will want to consider before calling up your attorney to prepare the application. You need to make sure you can provide a specimen (ie picture of the trademark) that shows more than ornamental use. Your application will be rejected if your specimen isn’t right, and hopefully, your attorney (wink wink) knows this and can ensure you have the right one. But, to make it easier on them lets talk about what kinds of specimens are appropriate for your clothing line.
Avoiding Ornamental use
The best way to avoid an ornamental refusal from the USPTO is to change where you put your clothing trademark in your specimen. A great way to think of this is like a tag. If you look inside most of your shirts or pants, you will see the logo/brand name of the company printed where the tag is. That is the ideal type of specimen to provide.
If you’re not in the business of printing your logo inside your gear just yet, utilizing tags or stickers on the clothing with your trademark on them is also a great way to avoid an ornamental use denial. Put yourself in the shoes of the consumer. When you go to buy clothing you probably rip off a few tags that contain the name of the brand. This allows a consumer to associate that item of clothing with a particular brand. And, that is the goal of trademarks my friend!
When your application and specimen are submitted to the USPTO the specimen must show a tag, a label, a sticker or the mark in use in a way that provides more than just design use of the mark.
Have more questions?
Are you actually more confused now than you were before? Worried your specimen or use of your mark is merely ornamental? Don’t worry, there are plenty of ways to show the USPTO that your mark is not simply a design element of your clothes! Send me an email at Shannon@montgomerypllc.com if you need help developing the proper specimen for your application, I am happy to help!
Please note that this is not meant to be legal advice for you or your situation, this is merely some legal research and knowledge on the given topic