Trademark applicants commonly misunderstand how a trademark should be used in connection with apparel, which can result in an “ornamental” refusal issued by the United States Patent and Trademark Office (USPTO). To understand why the mark(s) must be affixed to the apparel in a certain way, applicants must first understand the purpose of a trademark.
A trademark includes: (1) a word, symbol, slogan, or any combination thereof, (2) used (3) to identify the source of goods and/or services. The definition is split into three parts so we can further dissect the key components.
(1) Types of Trademarks
Nike is a good example of a company that uses word mark(s), slogan(s), and symbol(s) as trademarks to help consumers identify its brand. Naturally, when you think of this company, the word mark Nike would come to mind, but also the “Just Do It” slogan, and the “swoosh” logo.
(2) You Must USE the Trademark
Second, trademark rights in the United States are based on USE, whereas many other countries operate on a first-to-file system. A USPTO trademark application can be filed before the mark is in use (this is referred to as an Intent-to-Use application), but the mark will not proceed to registration until a Statement of Use is submitted with an appropriate specimen.
The specimen demonstrates that you are using the applied for mark appropriately in connection with the listed products and/or services. Failure to do so, will result in a refusal notice from the USPTO. As mentioned above, the common refusal for apparel is that the specimen solely features the mark as an ornamental design, which will be discussed further below.
(3) Source Identifier
Third, a trademark functions as a source identifier. As such, a mark should be affixed to apparel in a manner that will help consumers identify the source of the product. The easiest way to flex this consumer perspective muscle is to look through your own clothes and ask yourself, how do I know the source of this product? While I encourage you to do this, I have inserted a couple images of clothing items from our household closet to illustrate this topic.
Appropriate Trademark Specimens for Apparel
For apparel, the mark should be visible on an inseam label, a hang tag, and/or a SMALL design or discrete wording. The Vuori mark, on the jacket in the image below, is visible on the inseam tag and the bottom right corner of the jacket. The Adidas mark on the T-shirt is likewise visible on the inseam tag and a hang tag.
Applying the mark to the inseam label and/or a hang tag is straightforward. A safety pin will suffice to attach the hang tag to the clothing. A design or wording affixed to the apparel, however, must be SMALL to function as a trademark. See the image of the Vuori jacket below for an appropriate example. In addition to the Vuori example, you might be familiar with the small alligator logo used by Lacoste or the polo player on Ralph Lauren clothing. You will typically find these logos or words, on the breast area of a shirt, a pocket, or a corner as shown in the image.
Please note, I am not in any way affiliated or sponsored by Vuori or Adidas. I selected these items because they provide good examples of various ways you can affix a mark to apparel for trademark purposes.
USPTO examiners consider the size, location, dominance, and significance of the mark as applied to the apparel to determine whether it is merely ornamental (i.e. decorative), or functioning as a trademark. Larger designs or slogans displayed across the front of a shirt, hoodie, etc., will be deemed ornamental and rejected for trademark purposes.
Does this mean you cannot display your brand name or logo across the front of a shirt? No. As you can see, the Adidas logo is prominently featured in the center of the T-shirt. However, if you want to obtain a trademark registration and/or enforce your trademark rights, you must also have that word, slogan, or logo functioning as a trademark by affixing it appropriately to the apparel, which Adidas has done with the hang tag and inseam label.
Before filing, consider consulting an attorney to assist you with a trademark search and to guide you through the application process to avoid delays and additional costs associated with responding to an Office Action, filing a new application, and/or defending a trademark infringement claim.
If you already filed an application and received an ornamental refusal, it may be possible to correct the application. I would recommend consulting an attorney to discuss the best path forward.
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