How to Get a Trademark for your T-shirt Clothing Company

With the popularity of street-wear and logo adorned fashion, it's important for designers to invest in registering their trademarks!

This blog post is for informational and entertainment purposes only on things to consider when getting a trademark for your T-shirt clothing company. It is not legal advice. If you have specific legal questions, you should consult with an attorney licensed in your jurisdiction

The global fashion industry is valued at over 400 billion dollars and fashion knock-offs are a large part of this growing market. However, copies hurt a fashion brand's value. For high-fashion companies these fakes or near-identical copies dilute the luxury and exclusiveness of their brand. Online sales are the key to a clothing company's success, thus it's not just high-fashion brands that need to worry about dilution and infringement. 

You should get a trademark registration for your clothing company because it:

• helps protect your website URL

• offers benefits for online sales, such as Amazon Brand Registry

• helps protect social media use, such as protecting your Instagram name

• adds value to your company

• helps protect against fakes or other infringement

Many people file for clothing trademarks incorrectly.

While copyright registrations can help protect a design or pattern, a trademark registration will help secure a clothing company's brand name. The United States Patent and Trademark Office (USPTO) registers trademarks. From my personal experience, clothing is the most popular item to register. However, many people file for clothing incorrectly.

To get a trademark for your t-shirt clothing company avoid these 2 common errors:

1. merely ornamental use

2. merely informational matter

Both of these issues are rooted in the "failure to function" portion of the Trademark Act, Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127. Paramount Pictures made both of these errors in their application for clothing inspired by the cult film Mean Girls but were able to overcome it based on fame. However, most fashion companies starting out will not be able to overcome these reasons based on money and fame. To avoid this, use the brand name on tags or somewhere else that is not "ornamental" and have a brand name that is not so common it is "merely informational."

Case of the Mean Girls T-Shirt Trademark

Even large companies, such as Paramount Pictures, have wrongly filed for t-shirt trademarks! Let's look at Paramount Pictures Corporation's trademark, ON WEDNESDAYS WE WEAR PINK, to review how to register a t-shirt slogan as a trademark. 

The mark, ON WEDNESDAYS WE WEAR PINK, (U.S. Reg. No. 4897107) is a famous quote from the movie Mean Girls and Paramount was selling shirts with the slogan on the front. They received a merely ornamental refusal as their first specimen was only of the slogan on the front of the shirt.

Merely Ornamental Use Refusal

Many trademark applicants make the mistake of submitting ornamental specimens instead of source identifying specimens.

It's common for movie slogans to be printed on the front, but a slogan printed on the front is ornamental. Words or a design on the front of a t-shirt doesn't tell you where it came from and someone buys the shirt because of the front design, not because of the brand.

If you're t-shirt is made by Hanes Cotton and sold at Lindsey's Boutique, the source indicator of boutique services is Lindsey's Boutique but the source indicator of the t-shirt is Hanes Cotton. Thus, even if Lindsey prints "ON WEDNESDAYS WE WEAR PINK" on the front of her shirts, she can't get a trademark for shirts.

If you really want what you have on the front of a shirt trademarked, you probably need to ALSO print the mark on the packaging or hangtag of the clothing. Look at your NIKE or UNDER ARMOUR t-shirts, not only are the logos on the front, they're also on the back tags.

In the first specimen submitted by Paramount, MEAN GIRLS is used as a source indicator, but the phrase is not. Therefore it was rejected.

Adding a hang tag or new packaging isn't the only way to overcome a specimen refusal. For instance, in the case of ON WEDNESDAYS WE WEAR PINK, (U.S. Reg. No. 4897107), Paramount's attorneys submitted multiple office action responses arguing against the refusal and presenting evidence of the fame and widespread recognition of ON WEDNESDAYS WE WEAR PINK. While that was successful in 2015, I think it would be harder to win this case today due to the rise of the merely informational refusal.

Merely Informational Matter Refusal

Many trademark applicants make the mistake of applying for a slogan when they should be applying for their brand name.

The brand name, or source indicator of Paramount's Wednesday is for Pink products, is MEAN GIRLS. The slogan has earned recognition of MEAN GIRLS and their attorneys argued it is famous so should be allowed. However, many small fashion start-ups will not be able to cite to Box Office Mojo's opening weekend statistics to prove fame. It is more economical for fashion companies to have good specimens instead of trying to argue fame.

Many applicants apply for a slogan that is too widespread to be a source indicator.

A good example of this is Forever 21's use of JOHN 3:16. That slogan printed on their bags is an already famous phrase as it refers to a section of the Bible. Thus, that slogan can't direct clients to the company, Forever 21, as JOHN 3:16 directs shoppers to the Bible.

If you make up a slogan and use it in connection with your clothing, then it can likely be trademarked. But if you take an already used phrase, you likely can't register it as a trademark as it's already commonly used.

If it's not a religious or Latin phrase, it can be harder to tell if it's a common, widely used message versus an unique slogan. The main way I double check as part of a client's advisement, is to search Google Shopping and Etsy.

If a client came in today for ON WEDNESDAYS I WEAR PINK, I would advise them it's merely informational matter as the slogan is too widely used to be a source indicator of their brand. Since their are dozens and dozens of RedBubble, Etsy, and Ebay sellers selling products with that slogan, it can't be a strong brand of 1 company.

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Summary on How to Trademark Your T-shirt Slogan

Use the slogan on the packaging or tags of the clothing, as you likely can't argue fame like Paramount Pictures.

Also, the slogan should be unique. If it's too widely used, you'll get a rejection that if can't function as a source indicator as a consumer would never connect that slogan with ONLY your fashion brand.

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A trademark application filed in error can cost time and money - you could loose the  brand name, face civil fines, and/or have committed fraud upon the government. While it may seem that you can file for a trademark on you own, I highly suggest hiring an attorney who can complete a thorough likelihood of confusion search and help guide you through the possible pitfalls.