A very common mistake made by pro se applicants (and some attorneys too) relates to trademark filings for clothing. There is a misunderstanding that if one comes up with a unique or catchy phrase and puts it on a t-shirt or hat, it can be protected with a trademark registration. This is not usually the case.
A trademark, by definition, is a source identifier. That means when a customer sees a trademark, they automatically know from where that product or service comes. When you see the Nike swoosh on a shirt, you immediately know where that shirt comes from and the level of its quality. The same goes when you see the Starbucks logo on a bag of coffee. Thus, a trademark is more than just a catchy word or phrase - it identifies the source of a particular product or service.
When you see the phrase on the shirt below, does "High Maintenance Redneck" strike you as the company behind the shirt? Or does it strike you as a catchy, decorative phrase that is supposed to refer the wearer?
that is merely a decorative feature does not identify and distinguish the applicant’s goods and, thus, does not function as a trademark. A decorative feature may include words, designs, slogans, or trade dress."
In determining whether a phrase or design on clothing functions as a trademark or is merely decorative, the Trademark Office will consider "the size, location, and dominance of the proposed mark, as applied to the goods." TMEP 1202.03(a). Specific to slogans or phrases on shirts, the Trademark Office has stated "[s]logans or phrases used on items such as t-shirts and sweatshirts, jewelry, and ceramic plates have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating the source of the goods." TMEP 1202.03(f)(i).
Thus, the applicant's HIGH MAINTENANCE REDNECK application filed on August 14th will receive an office action refusing to register the trademark because, as it is pictured in the applicant's specimen above, it is being used in a decorative manner and not as a trademark.
How do you protect a phrase or slogan on clothing? The best practice is place it on your clothing where you would typically see a trademark for a clothing company. The tag of the shirt is a great place to start. Small, discrete logos on the breast pocket or sleeve usually work as well. Whatever you do, don't rely on a slogan plastered across the front like the applicant above.
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