Every trademark application filed with the United States Patent & Trademark Office (USPTO) must show use of the trademark in commerce before a trademark will be registered. The trademark applicant must submit a specimen, or evidence, to show use of the mark in commerce. “Use of the mark in commerce” is a phrase that has a particular meaning in trademark law. There are very specific requirements that must be followed to show use of the mark. One requirement is that the specimen cannot show an “ornamental” use of the mark.
Having an “ornamental” specimen is a common issue with trademarks for clothing. If the specimen shows an ornamental use then the trademark application will be rejected for failing to show use of the mark in commerce.
DESIGNS ON FRONT OF SHIRT ARE “ORNAMENTAL”
Many trademark applications for clothing attempt to use a design on the front of the clothing as evidence of use of the mark in commerce. But the USPTO will reject this type of evidence as being ornamental. This happened in a trademark application for TWISTED MISFITS. The trademark was placed on the front of a sweatshirt, as shown in the image on the right. The specimen was rejected because “the specimen of record is merely a decorative or ornamental feature of applicant’s clothing and, thus, does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others.”
SPECIAL RULE FOR SMALL DESIGNS
Small designs on the front of clothing may be allowed. For example, the crocodile logo for Lacoste, as shown on the left, is acceptable. The USPTO states that a small, neat, and discrete word or design feature, such as small design of animal over pocket or breast portion of shirt, may be valid evidence of use of the mark in commerce. Note that a small design feature will not necessarily be acceptable in all cases. This means that a small logo may be sufficient, but there is no guarantee.
HOW TO SHOW USE OF A TRADEMARK ON CLOTHING
There are some methods that are generally successful to show use of a trademark for clothing. These are tags, labels, and websites. Tags are attached to clothing, and may have a price on the back. The tag below shows an acceptable specimen for the trademark A ACME. Labels are also a common method to show use of a trademark on clothing. Labels are permanently attached to the clothing, as shown below by the label for a trademark for JUNK FOOD.
SHOWING USE OF TRADEMARK FOR CLOTHING ON A WEBSITE
Websites are often used to show use of a trademark on clothing. On a website, the trademark must be used near the description of the clothing, and there must be a shopping cart or other way to place an order for the clothing. The US Patent & Trademark Office provides an example, as shown in the image below.
This is a short explanation of how to show use of a trademark on clothing. Contact Adams Law Office if you have questions about showing use of a trademark on clothing, or for other goods or services.
This blog is made available by Adams Law Office for educational purposes only. It is intended to convey general information and a general understanding of the law, not to provide specific legal advice. The blog discusses the state of law at the time of writing. Later events may change the law and/or analysis. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances.