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  • danaldickson

Why is it so hard to register a trademark for use on a t-shirt?

Updated: Aug 24, 2021

Back when I reviewed trademark applications at the USPTO, I wrote many refusals of applications for wording or designs on t-shirts. There are 2 main reasons why applications like this are often refused. To understand them, it is helpful to remember the function of trademarks: they are source identifiers. Their purpose is to tell consumers where to go to get more of a particular product or service. Both of the refusals below basically come down to the fact that the wording or design, as used on the t-shirt, doesn’t do the heavy lifting of a trademark: it’s not helping anyone identify where those shirts come from.

Failure to Function Refusal

We often use our clothing, and especially our t-shirts, to express affiliation with a group, support for an idea, or our personal beliefs. When the wording or design on a t-shirt serves that purpose, it very likely fails to indicate the source of the shirts and so fails to function as a trademark.

For this reason, the USPTO has refused applications to register marks like ”I ♥ DC” or “ONCE A MARINE, ALWAYS A MARINE,” or quotes from the Bible used with clothing. In the first instance, people who saw clothing with ”I ♥ DC” on it would likely perceive that as a way for the wearer to express enthusiasm for the city of DC, not as an indicator of the source of this clothing. Similarly, people who saw “ONCE A MARINE, ALWAYS A MARINE,” on clothing would likely perceive that as a way for the wearer to support the U.S. Marines, and people who saw quotes from the Bible on clothing would likely perceive that as a way for the wearer to express their Christian identity, not as an indicator of the source of this clothing.

This type of refusal is an “absolute bar” to registration – meaning that you cannot amend the application to overcome it. You can try to prove that your mark really does indicate source, but if that argument fails, you are out of options.

Ornamental Refusal

In this situation, the problem is that the wording or design on the t-shirt just functions as decoration or ornamentation. It’s making the shirt more attractive, but it isn’t helping anyone identify the source of the shirt. Don’t get the wrong idea: this doesn’t mean your logo has to be ugly for you to register it with t-shirts. It all comes down to consumer perception: when consumers see the wording or design on the t-shirt, do they understand that it refers to the source of the shirt? Or do they think it’s decoration?

When the attorneys at the USPTO assess this, they pay particular attention to the size and placement of the mark on the shirt. Larger designs or wording located in the upper center of the front of a shirt typically read as decoration. Smaller designs or wording in less prominent locations like the hem of the shirt or the pocket have a better chance of being perceived as source identifiers.

One of the most frustrating things about this type of refusal, from the applicant’s perspective, is that you often won’t know about it until you are deep into the application process. That’s because an ornamental refusal is tied to the way that the mark is used on the goods, and the USPTO won’t know how your mark is used on your goods until you show them.

If you file your application based on an intent to use the mark (meaning you aren’t yet using it out there in the real-world marketplace on the date you file the application, though you plan to start using it soon), then you don’t have to show the USPTO what your mark looks like on your goods for many months. It currently takes about 5-6 months for the USPTO to process and review your application after you file it. In the best-case scenario, the USPTO would approve your application (in reality, most applications filed online have at least one problem with them). If there are problems with your application, it may take months to resolve them.

Even if you are able to get your application approved, the USPTO then opens the review process up to the general public for 30 days during which anyone can come forward and file an Opposition to your application. If that happens, you deal with Opposition proceedings that may last months or more than a year while you battle over ownership of the mark. If you make it through the Opposition window with no problem or win your Opposition, then the USPTO will issue a document asking you to prove actual use of your mark. You do this by submitting a specimen: something that shows your mark used on or in connection with your shirts.

Only at that point does the USPTO determine whether your use is ornamental. So you may be many months or years into the process, having spent thousands of dollars on your application before this problem is brought to your attention. Of course, if you are working with a competent attorney, they should be able to flag this as an issue for you early on in the process.

There are several ways you can overcome this type of refusal (more on that in another post). For now, be careful about options to amend to the Supplemental Register or to amend the filing basis to Section 1(b) (aka “intent to use”). Although a registration on the Supplemental Register is better than nothing, it offers a more limited protection for your mark than a registration on the Principal Register. Also, if you wanted access to the Amazon Brand Registry, you won’t be able to get it with a registration on the Supplemental Register. And if you amend your filing basis to intent to use, you’ll still have to come up with an acceptable specimen before you can get a registration, and you’ll also have to pay an extra $100 (per class of goods/services) to the USPTO when you do submit your specimen.

This information was posted on July 24, 2021 and was accurate as of the date of writing. However, the law changes frequently, and readers should not rely solely on general online information but instead should consult a licensed attorney by asking questions about their specific issues when they need legal advice.

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