Trademarking Your Brand in the Fashion Industry

In the fashion industry, understanding the difference between using a trademark in an ornamental fashion and as a proper trademark is crucial. Using a mark in an ornamental fashion can lead to the USPTO refusing your trademark application.

Trademarks for clothing: Why ornamental features aren't registrable

Ornamental, decorative features that don't distinguish goods can't be registered as trademarks. The Trademark Manual of Examining Procedure (TMEP) underscores that ornamental features don't identify the origin of clothing or goods. To be registrable, features must indicate the origin of the clothing line, such as the company's name or logo.

Defining ornamental use

"Ornamental" refers to features used purely for decorative or aesthetic purposes. In the fashion industry, ornamental use can be part of the design or the clothing item itself.

Illustrative examples

Examples of ornamental use include t-shirts with dominant slogans like "Be Happy" and printed phrases on items like mugs and towels, which serve primarily as decoration. In contrast, some slogans, like Nike's "JUST DO IT," are famous and not ornamental because they identify the brand.

Non-ornamental approaches approved by the USPTO

The United States Patent and Trademark (USPTO) accepts non-ornamental approaches, such as:

• Placing the mark in less visible areas like inside a shirt collar.
• On a small corner of a garment.
• Or as a tag or sticker.

Responding to ornamental refusals

When faced with an ornamental refusal from the United States Patent and Trademark Office (USPTO), you can challenge the decision and continue the trademark registration process.

Challenging ornamental refusals

If your trademark application is refused on grounds of ornamental use, you can take various steps to address the issue. These include:

Submit a substitute specimen: Provide a specimen for "use in commerce" applications. This should demonstrate the proper use of your mark and prove it's not ornamental but a source indicator.

Apply for the supplemental register: Opt for the Supplemental Register. While this offers limited protection, it guards against conflicting marks in later applications.

Amend to "intent to use": File an "intent to use" application for more time to prepare a specimen. 

Submit evidence of supplementary use: If your mark is for supplementary goods, present evidence that the mark is used in connection with goods not listed on the application. For example, if a university sells t-shirts, the primary goods are educational services. The t-shirts supplement these services.

Demonstrate acquired distinctiveness: Show that the mark has acquired distinctiveness. This is by using it in commerce for an extended period and through advertising your goods.

Conducting a trademark search 

Before registering a clothing brand trademarks, conducting a thorough search is essential. This ensures your chosen mark is unique and doesn't infringe on existing trademarks. Trademarkia is a valuable resource for this purpose. Follow these steps for a basic search:

1. Visit Trademarkia: Go to the Trademarkia website. We provide access to a comprehensive database of registered and pending trademarks.
2. Enter your mark: In the search bar, enter the mark you intend to trademark.
3. Review search results: Trademarkia will display a list of trademarks related to your query. Examine the results to see if there are any similar marks in your industry.
4. Analyze trademark details: Click on specific trademarks in the list to view detailed information about them. Pay close attention to those in your industry or share similarities with your mark.
5. Consider consulting an experienced trademark attorney: If you find any potential conflicts or if your mark is in a highly competitive field, it's advisable to consult with a trademark attorney for a more in-depth search and legal guidance.

By conducting a preliminary search on Trademarkia.com, you can gain valuable insights. You'll learn about the availability of your desired clothing trademark. You may also be able to make informed decisions before proceeding with any trademark registrations.

The importance of understanding trademark law

Understanding these distinctions and response strategies is vital. You can ensure your mark is used in a non-ornamental and registrable manner.

Trademark protection plays a significant role in the fashion industry. It helps establish brand recognition and safeguards the distinctiveness of your clothing brand. By understanding the nuances of trademark use and seeking proper federal trademark registration, you can protect your brand identity and reduce the risk of infringement by others.