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t-shirt slogans, designs, and trademarks

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.

Is this trademark bill I received a scam?

We frequently are asked by clients if a trademark bill they received in the mail or through fax is a real bill.  Typically these direct bills are scams, but if you receive a notice you should double check with your trademark attorney to be certain it was not an error on behalf of the U.S. Patent and Trademark Office or a miss-sent communication from a foreign trademark office.

When we file your trademark application with the U.S. Patent and Trademark Office, we designate our office to receive all further official correspondence.  While we list our office for correspondence, the Trademark Office publishes your trademark application, along with your address, which third parties can obtain through the Trademark Office’s website.  There are a wide range of different third parties with different offered “services” from including your trademark in their publication to being a direct scam in which the third party seeks payment from you for some alleged service it provided.

The U.S. Patent and Trademark Office maintains a list of non-USPTO solicitations here.  If you are contacted by any of the listed companies, do not pay the bill they send you.

In sum, you should view any third party trademark bill as being a scam unless proven otherwise.  Do not pay any “bill” you directly receive without first discussing the bill with your trademark attorney.

State and Federal Trademark Registrations

Should I get a state trademark registration or a federal trademark registration?

Both state trademark registrations and federal trademark registrations are very beneficial to both individuals and companies.  State trademark registrations typically provide constructive priority throughout the state in which the registration is obtained.  Similarly, federal trademark registrations provide nation wide constructive priority.  A company or individual should typically obtain a State trademark registration when they are involved in intrastate commerce meaning they operate solely within one state and/or are local companies.  Typical examples would be small, non-online stores, lawn care companies, beauty salons, and local restaurants and bars.

Obtaining a federal trademark registration requires that the company be involved in interstate commerce, or commerce that crosses state lines including if the company has an internet business presence.

Obtaining a federal or state trademark registration can be very beneficial to a company.  This includes providing priority over subsequent, or junior, users in the event the trademark registration holder expands to a new market.  If there is a company using the same trademark in that market but it is a junior user, the trademark owner may be able stop the junior user from using the mark.  Similarly, if a large company begins using the trademark after your use of the mark, it is much easier to prove that the trademark registrant’s use of the mark pre-dated the subsequent user’s use if the trademark registrant possesses either a state or federal trademark registration pre-dating the subsequent user’s first date of use.

At Shaver & Swanson, LLP we highly recommend trademark users obtain either a federal or a state trademark registration, or in some situations both, to protect their trademark rights.

 

What is a Federal Trademark Registration?

A Federal trademark registration (as opposed to a state trademark registration or common law trademark rights) provides constructive nation-wide notice that you are using a mark on the goods and/or services listed in your trademark registration.  In sum, the U.S. Congress expanded common law trademark policy through the enactment of the federal trademark registration system. The federal trademark registration system provides constructive notice to other participants in the marketplace and prospective participants in the marketplace that a registrant is using the federally registered trademark and the federal registration system establishes priority in the rights afforded to the registrant. Federal trademark registration benefits the registrant by providing nationwide notice that the registrant is using the mark, benefits participants in the marketplace by allowing the participants to “rely upon a search of the trademark registry and their own personal knowledge of whether the mark has been used so that what may be substantial expenditures of money promoting the mark will not be wasted,” and benefits the consumer by allowing the consumer to rely on a trademark of a good in making a purchase without having to worry about purchasing a good of different quality than expected. Natural Footwear, Ltd. v Hart, Schaffner & Marx, 760 F.2d 1383, 1395 (3rd Cir. 1985)

In sum, a Federal trademark registration provides your company with a legitimate priority date and, in the event other companies unknown to you have been using the mark, locks in the territory of those prior users. Without a federal trademark registration, it is a race between the parties to establish customer recognition, i.e. secondary meaning, of the unregistered mark in unoccupied territory.

Common law trademarks

How do I get a trademark?

While a Federal trademark registration or a state trademark registration is greatly preferred, in general, Trademark protection ensues under the common law of trademarks as soon you begin using the name, but only as far as the area in which you are using the mark, provided that the trademark is protectable and not a generic word for your goods or services.  The U.S. Supreme Court described this principle in stating that a mark is protectable as far as it is known, but this protection does not sch to markets where goods bearing the mark have not traveled.  For example, a small hair salon in the North End of Boise, Idaho may have rights in its name in the North End, or perhaps even as wide as the entire Treasure Valley depending on its marketing and client range.  However, this hair salon may not be able to protect its name as far away as Portland, Oregon, New  York, or California.

The United States Supreme Court described the principle of trademark law and set forth the boundaries of common law trademark rights in Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916). In Hanover, the United States Supreme Court illustrated that the purpose of trademark law is to protect the good will of a trade or business by identifying “the origin or ownership of the article to which it is fixed.” Id. at 412. The rights afforded to an entity through its trademarks grow out of use of the trademark and through the good will that becomes associated with the trademark. Id. at 413. Trademarks are treated as merely a protection for the good will associated with the mark, and not the subject of property except for the limited extent the marks are used in connection with an existing business. Id. at 414. The United States Supreme Court in Hanover summarized the geographical limitation of a trademark when it stated “the mark, of itself, cannot travel to markets where there is no article to wear the badge and no trader to offer the article.” Id. at 416.

In order to obtain trademark rights under the common law for a descriptive trademark, your mark must have acquired secondary meaning.  This means that the consumers in an area associate that mark with your business or product, as opposed to associating the mark as a description of the goods or services you offer.

The Internet has greatly complicated the analysis of how far a common law trademark’s rights stretch.  Does an online company who has a few sales across the country have nation-wide rights?  Probably not, but determining just how far those rights stretch is a very complicated, expensive argument to make in court.

State or Federal trademark registration greatly helps in clarifying rights and puts others on notice that you are using your trademark and helps to avoid the expense and issue of proving a common law trademark.  Please do not hesitate to contact us to assist you in furthering the protection of your trademark.

Trademark Searching

How do I do a trademark search?

The first step of getting a trademark is to see if there are likely to be conflicts with other marks.  The conflict is evaluated on the basis will the mark create a likelihood of confusion with a prior mark, including the predominant questions of if the marks sounding and appearing the same, and if the goods and services the marks are used on will likely cause confusion with the senior mark holders.

There are several places to look for these potential conflicts: the federal database of trademarks, state trademark registration databases, common law marks used without being registered, corporate names, and trademarks registered in the 50 states.  A conflict in any of those categories can be a problem for registering or using a trademark.  It is advisable to search all of these sources for possible conflicts, but at least searching the federal database is essential to begin.

Foreign trademark protection

What if I want to have my mark registered in other countries?

  • If your products are to be sold in other countries, you may wish to register trademarks in those countries. A Foreign Trademark Registration is generally acquired on a country-by-country basis, and trademarks registered in foreign countries do not affect your registration of the mark in the United States.
  • If a trademark is already owned or an application has already been filed in the United States, the owner may file for foreign protection under the Madrid Protocol, rather than filing in each country separately. Filing under the Madrid Protocol can reduce costs considerably if more than one foreign registration is sought.
  • Shaver & Swanson, LLP has a network of international trademark attorneys that can handle your trademark protection needs anywhere in the world.

How long do trademark rights last?

How long do trademark rights last?

  • First, the continued validity of a trademark registration is dependent upon actual use of the trademark. In this sense, trademarks are not true property rights in that an express, or circumstantially proven, permanent intention to abandon the trademark is sufficient grounds to cancel a federal trademark registration.
  • Trademark rights can also be lost through dilution. Dilution commonly occurs where competitors adopt very similar trademarks and the trademark holder takes no action to defend the mark.
  • Another means of losing trademark rights occurs when the trademark becomes so identified with the particular, precise goods to the point where the mark loses its distinctiveness and instead becomes a generic descriptive term. An example most people are familiar with is aspirin, which was originally a trademark (owned by Bayer), but became so identified with acetylsalicylic acid tablets that it eventually turned into a generic term. Other companies are fighting to keep their trademarks from being found generic. These include Xerox ® for photocopiers.
  • An actively used trademark can continue to exist, increase in value to the company, and increase the sales and profits of the company for an unlimited period of time.

Trademarks Overview

There are several types of trademarks possible: common law, state, federal and foreign.  A federal trademark registration provides priority and protection on a nationwide scope and is excellent for companies that conduct business on the Internet serving consumers in multiple states. A state trademark registration provides state wide priority and protection and is best suited for companies that operate within a single state, such as local companies. Common law trademark rights provide inherent protection when a business is utilizing a trademark in a given area and has developed name recognition within that area.

How do I obtain a federal trademark?

  • First, have a trademark search conducted by an attorney to determine if other similar marks exist. A trademark search should not only look for similar marks, but phonetic equivalents, logos, designs, cancelled trademarks, and should give you an analysis of any less similar trademarks which might pose a likelihood of confusion with your trademark. A general computerized search will not be this exhaustive, nor will you have any idea regarding whether a likelihood of confusion exists.  While there is no requirement by the Trademark Office that a trademark search be performed, we often recommend that the client have such a search done before thousands of dollars are spent in marketing and advertising…building up goodwill in a company or product’s name.
  • Second, have a trademark application filed for your trademark by an attorney. A properly filed trademark application will avoid common mistakes which will automatically result in a refusal to register your trademark application and/or (quite possibly) a loss of rights. Your trademark is too important to your business to lose–have it filed by a professional.
  • Third, “prosecution” of the trademark application takes place. This is the process where the trademark examining attorney asks for additional information, asks an applicant to make changes to the application, and issues formal “refusals” to register for grounds such as “likelihood of confusion,” and “merely descriptive.” Once the examining attorney is satisfied that the trademark is registerable, the trademark will be published in the Patent and Trademark Office Official Gazette for opposition. The Official Gazette is routinely reviewed by law firms and corporations to ensure that no marks are being registered which are confusingly similar to other marks of clients of the firm or company. If opposition is filed, it is the applicant’s burden to prove that there is no likelihood of confusion between the proposed mark and the pre-existing mark.
  • For “intent-to-use” trademark applications, after successfully negotiating the opposition phase, a notice of allowance will issue, and the applicant has six (6) months in which to certify actual use in interstate commerce and supply samples of its use.
  • Of course, this is a highly simplified discussion of how to obtain a trademark. Again, if the trademark is worth obtaining, it is worth doing the job right. Find an attorney that you trust to file and prosecute the application for you.