We have a company name that we're looking to have trademarked. Among other categories, one we're considering adding to our application is for apparel. I thought I recalled seeing somewhere that in order for the U.S Trademark office to recognize your use of the name, etc on apparel, you had to include specific things on the apparel clothing. Is that correct? We are having t-shirts printed, and I am trying to figure out what I must include on there to satisfy the trademark office's requirements?
The main issue for the Trademark Office is using the mark as a trademark, not as decoration. If you show the mark on a hand tag or label (not printed across the front or back in large type) you should be fine.
State and federal laws also require certain disclosures on apparel labels, like country of manufacture, fabric content, etc., but these have nothing to do with trademark protection.
The foregoing is for informational purposes and does not constitute legal advice in a particular matter or the existence of an attorney-client relationship. All answers ©2017 Greg Victoroff, Inc. No further reproduction or use for any purpose.
You should have a US full trademark search done, which may include at least, USPTO pending trademark applications, USPTO registered trademarks, US state registrations, common law trademarks, and internet domain names to see if there are conflicting confusingly similar trademarks.
You may want to file for a US trademark application.
For a trademark for apparel, the apparel may include the trademark, for example, on a tag for the apparel.
You should discuss with an intellectual property attorney in a private consultation.
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No, I don't believe that is correct. You need to make proper trademark use of your mark on a label or hangtag, or on the apparel. You should consult an experienced trademark attorney to counsel you on labeling and clearance of your mark.
Mr. Sack's postings on Avvo are of a general nature, based on the facts provided and are not intended to be taken as legal advice or to establish an attorney-client relationship.
You are asking, I believe, a question about the specimen for Class 025. In most cases, where the trademark is applied to the goods or the containers for the goods in Class 025 by means of labels, a label is an acceptable specimen. Shipping or mailing labels may be accepted if they are affixed to the goods or to the containers for the goods and if proper trademark usage is shown. They are not acceptable if the mark as shown is merely used as a trade name and not as a trademark. An example of this is the use of the term solely as a return address.
Stamping a trademark on the goods, on the container, or on tags or labels attached to the goods or containers, is a proper method of trademark affixation. The trademark may be imprinted in the body of the goods, as with metal stamping; it may be applied by a rubber stamp; or it may be inked on by using a stencil or template. When a trademark is used in this manner, photographs or facsimiles showing the actual stamping or stenciling are acceptable as specimens.
Before you invest in any trademark make sure you get some legal guidance upfront. It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the TX secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.
Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence on all the text names upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property.
I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free consultation, get some insights then pick the best fit to work with and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.
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