Should You Register Your Clothing Brand as a Trademark?
Yes, it probably makes sense to register your clothing brand as a trademark. The fashion industry is crowded and filled with imitation. We think of two reasons to register a trademark, generally.
Defensive registration is about getting on the registry before another company. This defends against someone attacking your use of your trademark. For example, you may receive a cease and desist letter from another company. Trademark registration establishes that you own the trademark.
Enforcement is when you want to stop someone else from using your clothing brand. When the trademark office issues you a trademark registration, they are essentially certifying that you own the trademark and have a right to use it. If a dispute goes to court, you are the presumed rights holder.
Registration is especially useful for enforcement on third-party e-commerce platforms like Amazon.com and Walmart.com, and for infringing Instagram or Youtube.com content. Those sites will remove content that infringes your trademark, and sites like Amazon.com give registered trademark owners enforcement tools.
What Are the Requirements for Clothing Brand Trademark Registration?
Use in Commerce – Sales
“Use in Commerce” is required. For a clothing brand, this means “sales” of the types of clothing specified in the trademark application. Promotional gifting can qualify as a sale if it is bona fide. A trademark application can be filed before use in commerce. This is called an “intent to use” application.
Specimen – An example of how you use the trademark
The applicant must also provide the trademark office with an example of how the trademark is used in commerce. This is called a “specimen.” The goods and services determine the appropriate specimen.
For clothing, many brand owners put their trademark on their clothing. Generally, this is considered decorative and can result in the rejection of the application. Use of the trademark on a label or tag is preferred. This makes sense because when we want to know the source of a clothing item, we look at the label or sometimes the tag.
Use on a website with order information can also be acceptable. We also like to see the trademark on shipping materials, such as boxes and bags.
Use of the trademark on an advertisement for clothing is not acceptable as a specimen for registration.
Custom-printed boxes, mailing bags, hang tags, and clothing labels can be ordered from specialty printers.
I explain specimens of use for clothing brands in an article.
How to Register a Clothing Brand as a Trademark
Brand Strategy Session
We start with a brand strategy session. We will discuss the owner’s business plan. We will discuss advertising campaigns and how the client uses the trademark. This information helps us conduct a clearance study and draft a well-considered trademark application.
We recommend a clearance study to determine if the trademark is available for registration. The USPTO will perform a detailed and exhaustive search for conflicting trademarks. Trademarks that are similar, but not the same, can be conflicts. Our clearance study is designed to provide advanced warning of conflicts. The study allows the client to make an informed decision about whether to use the trademark while the application is pending.
Draft and File the Trademark Application
After the brand strategy session and clearance study, Hartmans Law’s trademark attorney prepares the client’s trademark application. The client reviews the application and approves it before filing.
Statement of Use
A Statement of Use is required if the trademark was based on “intent to use.” The Statement of Use must meet USPTO requirements. The USPTO closely examines the Statement of Use.
Legal Advice Regarding Enforcement and Renewal
After registration, Hartmans Law provides its clients with advice regarding enforcement practices. The firm also counsel’s clients regarding renewal deadlines and requirements.