Los Angeles Clothing Trademark Attorney

Trademarks & Clothing Lines: Do I Trademark or Copyright My T-Shirts?

By far, the most popular question we get is in regards to protecting a clothing line, whether it’s a small startup t-shirt company or an established name-brand apparel company with new designs, logos, or slogans. This article will cover many of the basic questions and quandaries that many clothing lines have.

What is protectable? Can I protect the name?

Trademarks

Having your attorney file a trademark application with the United States Patent and Trademark Office (“USPTO”), is the way to gain the protection of the brand, as it can protect the name, logo, or slogan of the apparel brand. To better understand what is protectable, let’s look at the classic example of Nike.

Nike, Inc. has several trademark registrations for the word “Nike” under different classes of goods and services. One registration is filed in connection with their goods of shoes, while a different application is for sporting equipment and another for backpacks. Further, Nike has several design registrations as well, most notably the swoosh symbol. Additionally, Nike has separate trademark registrations for its slogan “Just do it.”

So as you see, one company may have several trademark applications for the same word or logo, but just under different goods and services. The more trademark registrations a company has, the greater the strength of its intellectual property portfolio. To a startup clothing line, having multiple trademark registrations can attract more investors, and create greater confidence and valuation to your company.

Clothing has unique trademark issues compared to other goods and services. Most importantly in regards to the filing process, a proper specimen of use must be submitted that shows the name you have used, on the clothing itself, and must appear in the right location and be used in a trademark manner. Inexperienced attorneys typically receive ornamental rejections based on their specimen of use submitted during the trademark application process. That is why it is critical to have an experienced trademark attorney file the application the first time.

Once the application is filed and ultimately approved and registered, the owner of the registration will receive nationwide rights to enforce the trademark against other subsequent users. Further, the owner will be able to license, either exclusively or nonexclusively, the right for others to use the trademark name or logo. Licensing can be important to newer clothing companies that have established and created goodwill and a strong following of the brand but have yet to develop the expertise or resources to manufacture, distribute, or efficiently sell the clothing. The clothing company can provide a trademark license to a separate company that is more experienced in the manufacture, distribution, and sales, while the newer company reaps the benefits of the license royalties.

Copyrights

Many people ask if they can copyright their clothing designs. It depends. The ornamental designs that will be placed on the face of a shirt should definitely be copyrighted. In fact, any unique and original work of authorship, i.e., a unique design, or the graphics or artistic portion that many t-shirt companies use on the face of their clothing can be copyrighted, assuming it is not substantially similar to another copyright holder’s work. However, if the artwork is used to identify the brand or name of your clothing company, then the trademark is probably more applicable.

What about general patterns on clothing, can that be protected? Sometimes. For example, I once litigated a copyright infringement case in which the copyrights were for floral patterns used on the fabric of clothing. So certain patterns that are original works for authorship can be and should be copyrighted. So as you see, copyright protects more of the artistic patterns and artwork designs on clothing, whereas trademarks protect the name, logo, or slogan used to identify the brand of the clothing company.

Patents

What about the shape and design of the clothing itself, how do I protect that? Protecting clothing designs is more difficult. Neither trademark nor copyright can protect the actual article of clothing. However, sometimes protection may be afforded by patents, specifically design patents. Design patent protection can be granted to nonfunctional aspects of clothing, i.e., the scope of protection only covers the ornamental nature of the design of the clothing. So, it is possible, and we frequently obtain design patents for our clients on unique-looking shoes, bags, and other accessories or apparel itself to protect the “way it looks.”

Occasionally, an inventor may create some article of clothing that actually performs some specific function or has some utility to it. For example, a shoe that has a built-in iPod sensory device that can monitor your heart rate. In that case, a patent called a Utility Patent would be filed. Otherwise, design patents are typically used to protect the aesthetics of clothing.

International Rights

When a trademark application is filed for the client, is his trademark protected throughout the world? No. Filing a US trademark application with the USPTO will only afford trademark protection within the United States. In order to protect and enforce your trademark against others in different countries, we must file in those individual countries. You must contact me and discuss exactly which countries you are interested in so we can obtain a quote and determine the proper procedure for filing. Sometimes, there may be a streamlined and more inexpensive method to file international trademarks such as using the Madrid Protocol system rather than filing applications in each individual country.

These are only some of the issues regarding apparel and trademarks and intellectual property in general. As with any legal issue, always consult with a trademark lawyer before you start or invest in your new venture or line of clothing.