We are often asked by clients “can I trademark my t-shirt design?”
The answer to this question is that it depends. Trademarks protect the source identifying function of a name, word, or symbol. Thus if you use a name that identifies the source of your t-shirt or clothing, you likely can obtain a trademark registration on the name. However, on the opposite end of the spectrum, if you are using a design or slogan as a purely ornamental feature of the t-shirt, the trademark office likely will reject your trademark application as being ornamental. The Trademark Manual of Examination and Procedure (TMEP) provides the following guidance on the spectrum of ornamental registrations:
- (1) Ornamental matter that serves as an identifier of a “secondary source” is registrable on the Principal Register. For example, ornamental matter on a T-shirt (e.g., the designation “NEW YORK UNIVERSITY”) can convey to the purchasing public the “secondary source” of the T-shirt (rather than the manufacturing source). Thus, even where the T-shirt is distributed by a party other than that identified by the designation, sponsorship or authorization by the identified party is indicated.
- (2) Ornamental matter that is neither inherently distinctive nor a secondary source indicator may be registered on the Principal Register under §2(f), if the applicant establishes that the subject matter has acquired distinctiveness as a mark in relation to the goods.
- (3) Ornamental matter that is neither inherently distinctive nor an indicator of secondary source, and has not acquired distinctiveness, but is capable of attaining trademark significance, may be registered on the Supplemental Register in an application under §1 or §44 of the Trademark Act.
- (4) Some matter is determined to be purely ornamental and, thus, incapable of trademark significance and unregistrable on either the Principal Register or the Supplemental Register.
If you do receive an ornamental rejection, the United States Patent and Trademark Office provides guidance for overcoming the rejection. Additionally, the attorneys at Shaver and Swanson have successfully argued against ornamental rejections for clients in prosecuting trademarks in the Trademark Office and are available to assist you with prosecuting your trademark application.
If you do have a new design to utilize on your t-shirt, it may also be possible to seek copyright protection for your design, but this applies only to designs as opposed to slogans, phrases, or words.