Trademarks and Clothing Lines: Do I Trademark my T-shirts or Copyright it?
By far, the most popular question we get is in regards to protecting a clothing line, whether it’s a small startup t-shirt company or an established name brand apparel company with new designs, logos, or slogans. This article will cover many of the basic questions and quandaries that many clothing lines have.
What is protectable? Can I protect the name?
Having your attorney file a trademark application with the United States Patent and Trademark Office (“USPTO”), is the way to gain protection of the brand, as it can protect the name, logo, or slogan of the apparel brand. To better understand what is protectable, let’s look at the classic example of Nike. Nike, Inc. has several trademark registrations for the word “Nike” under different classes of goods and services. One registration is filed in connection with their goods of shoes, while a different application is for sporting equipment, and another for backpacks. Further, Nike has several design registrations as well, most notably the swoosh symbol. Additionally, Nike has separate trademark registrations for its slogan “Just do it.” So as you see, one company may have several trademark applications for the same word or logo, but just under different goods and services. The more trademark registrations a company has, the greater the strength of its intellectual property portfolio. To a startup clothingline, having multiple trademark registrations can attract more investors, and create greater confidence and valuation to your company.
Clothing has unique trademark issues compared to other goods and services. Most importantly in regards to the filing process, a proper specimen of use must be submitted that shows the name you have used, on the clothing itself, and must appear in the right location and be used in a trademark manner. Inexperienced attorneys typically receive ornamental rejections based on their specimen of use submitted during the trademark application process. That is why it is critical to have an experience trademark attorney file the application the first time.
Once the application is filed and ultimately approved and registered, the owner of the registration will received nationwide rights to enforce the trademark against other subsequent users. Further, the owner will be able to license, either exclusively or nonexclusively, the right for others to use the trademark name or logo. Licensing can be important to newer clothing companies that have established and created goodwill and a strong following of the brand, but have yet to develop the expertise or resources to manufacturer, distribute, or efficiently sell the clothing. The clothing company can provide a trademark license to a separate company that is more experienced in manufacture, distribution and sales, while the newer company reaps the benefits of the license royalties.
Many people ask if they can copyright their clothing designs. It depends. The ornamental designs that will be placed on the face of a shirt should definitely be copyrighted. In fact any unique and original work of authorship, i.e., a unique design, or the graphic or artistic portion that many t-shirt companies use on the face of their clothing can be copyright, assuming it is not substantially similar to another copyright holder’s work. However, if the artwork is used to identify the brand or name of your clothing company, then trademark is probably more applicable.
What about general patterns on clothing, can that be protected? Sometimes. For example, I have once litigated a copyright infringement case in which the copyrights were for floral patterns used on fabric of clothing. So certain patterns that are original works for authorship can be and should be copyrighted. So as you see, copyright protects more of the artistic patterns and artwork designs on clothing, whereas trademarks protect the name, logo, or slogan used to identify the brand of the clothing company.
What about the shape and design of the clothing itself, how do I protect that? Protecting clothing designs is more difficult. Neither trademark nor copyright can protect the actual article of clothing. However, sometimes protection may be afforded by patents, specifically design patents. Design patent protection can be granted to nonfunctional aspects of clothing, i.e., the scope of protection only covers the ornamental nature of the design of the clothing. So, it is possible, and we frequently obtain design patents for our clients on unique looking shoes, bags, and other accessories or apparel itself to protect the “way it looks.”
Occasionally, an inventor may create some article of clothing that actually performs some specific function or has some utility to it. For example, a shoe that has a built iPod sensory device that can monitor your heart rate. In that case, a patent called a Utility Patent, would be filed. Otherwise, design patents are typically used to protect the aesthetics of clothing.
Trademark Searching and Clothing Lines, the Most Important Step
When a new client calls me for the first time consultation and they say they have already started their clothing line and they have picked a name they love, I immediately discuss clearance and searching. Simply because you have picked a name that you are married to, does not mean you can use it. The worst case scenario is that you invest in a name and receive and cease and desist letter or worse a lawsuit telling you to stop and requesting damages and attorney fees. So the name you picked may very well have been trademarked by another company. That’s why it is extremely important to have an experience trademark attorney conduct a search prior to your adoption of a name. Here are some common questions and my typical response to clients:
Client: But I have registered the domain name and got my DBA, so I am protected, right?
My response: Wrong, simply registering domain names and a DBA is not actual “trademark use.” To establish trademark rights, you have to actually use the trademark in interstate commerce. And more important have a federal trademark application filed for you.
Client: I have filed for a corporation using the name I want to trademark but I have not sold any apparel yet.
My response: You still have not developed any trademark rights yet. You need to use, i.e., sell the apparel with the trademark on it.
Client: I did my own search, and mine is different from another registered trademark I found, because the name I want to use is “X, Inc.” and their trademark is “X Clothing”.
My response: You will still most likely receive a rejection from the USPTO, because words such as “Inc” “clothing” “enterprise” “LLC” and/or “apparel” and deemed to be descriptive and do not typically distinguish your chosen name from other trademarks.
Client: I saw a registered trademark with the same name that I want, but they only sell snow wear, and we sell water sports related clothing.
My response: Since the goods are very similar, you will likely receive a rejection. Only in some cases you can avoid a rejection if the style and market channels of sales of the clothing are different enough.
Client: Ok, so what should I do?
My response: We should conduct a trademarks search. First, pick a good, unique, nondescriptive name, so I can conduct a comprehensive trademark search, after which I will discuss with you possible conflicts in light of other existing registered or even pending trademark applications that have priority over your proposed new name.
Client: What if I have been using the trademark for many years but I never asked an attorney to file a federal application with the USPTO. And now there is a new guy on the block with the same name as me selling the same or similar products.
My response: Let’s investigate to see if you have a claim for trademark infringement. Also, if he filed a trademark application with the USPTO, we may also be able to file an opposition or cancellation proceeding in the Trademark Trial and Appeals Board.
So when you file for a trademark application for me, am I protected throughout the world? No. Filing a US trademark application with the USPTO will only afford trademark protection within the United States. In order to protect and enforce your trademark against others in different countries, we must file in those individual countries. You must contact me and discuss exactly which countries you are interested in so we can obtain a quote and determine the proper procedure for filing. Sometimes, there may be a streamlined and more inexpensive method to file international trademarks such as using the Madrid Protocol system rather than filing applications in each individual country.
These are only some of the issues regarding apparel and trademarks and intellectual property in general. As with any legal issue, always consult with a specialist, namely a trademark lawyer before you start or invest in your new venture or line of clothing.