When you’re trying to register a trademark for apparel in the U.S., there are some specific requirements. In my experience as a transaction-based intellectual property attorney, many clients who are starting an apparel brand don’t know these requirements, and it can lead to trouble.
The key issue is that in order to protect and register a trademark in the U.S., you need to be able to show that the mark has been used in interstate commerce in connection with the goods in the application. For some kinds of products, simply having the trademark (brand name or logo) appear on the product is good enough. But for apparel, it’s not that simple.
For example, let’s say your brand name or logo is printed on the front or back of a t-shirt. The United States Patent and Trademark Office (USPTO) will, in most cases, consider that to be “merely ornamental” and not sufficient to demonstrate use as a trademark. Likewise if your brand appears on the front of a baseball cap.
So how do you show that your trademark is being used as a trademark when you are selling apparel? There are two common ways to satisfy this requirement:
- If the trademark appears on the tag, neckline, hang tag, or packaging (like a bag or a shoebox), that will usually do the trick.
- Some placements on shirts and similar types of apparel can satisfy the requirement. For example, if your mark appears in a small format on the left side of the chest (like the Polo pony), or in a small format on the shirt’s sleeve (commonly seen in Nike goods), that will typically communicate that this is a brand rather than just an image on a shirt.
Another factor to consider is what types of apparel the mark is going to be used on. When we file a USPTO trademark application, we have to list all of the goods. So you can’t just say “Class 25: apparel”. You need to be specific. E.g.: “t-shirts, sweatshirts, baseball caps, and leggings.”
It’s important to note that evidence of use in commerce must be connected to a bona fide use, meaning the trademark is being used in the ordinary course of trade and not just for the purpose of securing a trademark registration. So you can’t just create a tag, take a picture, and send it to the USPTO to show use in commerce. A transaction-based lawyer can help guide you on this process.
The bottom line is that people often get caught up when they want to protect a trademark for apparel. Be sure you know the rules before you start using the brand and seeking trademark protection. If you have any questions about trademarks, don’t hesitate to contact me.
