- Hi everyone. I'm attorney Aiden Durham
with 180 Law Co in Denver, Colorado.
And welcome back to all up in your business.
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(screen typing)
(air whooshing)
In this episode of all up in your business,
I'm gonna talk about some things
that people commonly think are trademarks,
but which are actually not trademarks.
And specifically, I'm gonna talk
about this in the context of clothing designers,
and clothing apparel companies.
But before we get into it,
please be sure to like, subscribe and share.
And don't forget to check the description
for some links to additional information and resources too.
I would also like to thank
our very special partners for this episode.
Our friends over at Surfshark.
This by the way, is a trademark.
Surfshark is a VPN or Virtual Private Network provider
that goes far beyond what you would typically expect
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I'm sure you've heard me talk about VPN before,
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Of course, VPN has helped to protect your privacy,
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I used a VPN last year while I was traveling
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Let's get this party started.
So before I tell you about things that are not a trademark,
a little quick background on what is a trademark.
A trademark is a word, phrase, symbol, design, et cetera.
That is used to signify the source of a product or service.
A trade mark is a mark that is used in trade,
in other words in a business
to identify and distinguish
that business's goods or services
from those of another company or their competitors.
So the important part there is that's a mark used in trade.
A few examples of trademarks.
The Surfshark name and logo,
as we already discussed.
When we fire up our Surfshark app or visit the website,
we see that name and we see that logo,
and we know that what we're purchasing
is coming from this source, Surfshark.
Nike, this is a very well known trademark.
When we see this little swoosh
on the front of a piece of clothing,
or on the side of a shoe,
or some other article of clothing,
we know that this item came from Nike.
ANd this lovely Tiffany blue box.
Yes, that's right.
Tiffany's has a trademark,
not just on their name, Tiffany's.
Also on the color blue and the blue box itself.
When we receive a very special gift
from that special someone,
and it's handed to us in this lovely blue bag,
and we see this beautiful blue box.
We know this most likely came from Tiffany's,
unless our boyfriend's trying to pull a fast one on us,
and it's just tricking us.
But most likely these came from Tiffany's
and that's what we're about to get.
So those are all trademarks.
They are marks which tell us
where we got these products or services from.
So then what's not a trademark?
The most common thing that I see
where people getting confused
about if this is or not a trademark,
is when it comes to clothing companies and clothing designs.
So here's a common conversation that I will have.
Hi Aiden, I created this really awesome design
that I want to put on the front of T-shirts and sell,
because I think everyone else is gonna love this design
that I created.
And I wanna put it on shirts.
But before I start selling it,
I wanna get it trademarked.
So it's protected and so other people can't steal my design.
Nope, sorry.
That's not a trademark.
You can't just create a design,
stick it on the front of a shirt,
and call it a trademark.
That's not how this works.
So special shout out to my friend @Timberlakelaw on Twitter.
If you don't follow him, you should.
His twitter feed is full of fun,
interesting and sometimes mind blowing or mind boggling,
trademark examples.
And most of these that I'm about to talk to,
I got from him.
So here's a fun one.
This application for this trademark was recently filed.
They are seeking registration of this trademark
in class 025 for various types of clothing and apparel.
This is the specimen that was submitted
with the trademark application.
Remember, the point of the specimen
is that it's supposed to show how the trademark
is being used in commerce,
in connection with the sale of those goods or services.
This specimen simply shows us that there's an image
that's appearing on the front of a shirt.
This use, putting this image on the front of a shirt,
or on the front of a sweatshirt or any other product,
doesn't tell us where that product came from.
It doesn't tell us anything about the source
of that product.
It's really just a design that we're sticking on a shirt.
And unfortunately, that's not a trademark.
It's a design that's being used as decoration
on the product.
It's not being used as a source indicator for the product.
And this type of trademark
is most commonly referred to as ornamental.
And trademarks which are merely ornamental,
are not trademarks at all.
Ornamental trademarks don't actually function
as a trademark.
Instead, they are merely decorative features of the product
rather than indicating the source of the product.
I like to think about it this way.
If someone's going to buy your product
because the design appears on It,
then it's probably ornamental and not actually a trademark.
This goes for things like photos,
drawings, designs, phrases that you might stick
on the front of a T-shirt,
or stick them on the side of a coffee mug,
or put them on some stickers.
People are buying it because they like the design itself.
And that does not make it a trademark.
Compare that to an actual trademark
where the design or the image the logo,
the phrase might appear on the garment tag
on the inside of the shirt.
Or on the care label,
or on a hang tag when you're purchasing it.
Or you might see a logo like with Nike products.
You might see a logo on the shirt pocket,
or it appears small on the side of the sleeve.
We aren't buying those products
because we like the way the logo looks on the product.
At least usually not, sometimes people are.
But for the most part,
we're not buying it because we love this Nike logo so much.
We're buying it because this logo tells us
that this product came from Nike,
and we trust Nike's products or we trust that company.
And so that's why we're buying that product.
Here's another fun example.
This was submitted as a drawing
and a specimen for a trademark
to be registered in class 125 for T-shirts for logos.
Well, no, that's not a trademark.
I understand what the goal is With this.
You've created this this really cool image
or design or drawing and you really love it,
and you think other people will love it too.
Before you sell it and start really putting it out there.
You understandably want to protect
this unique design that you created.
But unfortunately, that's not what this is about.
Trademarks aren't used to protect designs,
or photos or images or phrases in a vacuum.
We're not protecting just this design.
That's not what trademarks do.
It's only when that design or image or word or phrase
is used by a seller in connection
with the sale of their products or services,
is when it becomes an actual trademark.
Again, at its best,
this would be maybe an ornamental trademark,
but really based off of how they've submitted
this information in the application,
it really doesn't even demonstrate ornamental use
of the mark.
This is really just a drawing on a piece of paper.
And in no way does this function or attempt
to function as a trademark.
But that doesn't mean this photo
is completely devoid of trademarks.
Look closely and you might see
that Nissan insignia at the top.
Now there's a trademark.
You get in the car,
you see that logo,
and you know you're driving away in a Nissan.
If this trademark were actually on the front of a shirt,
we would see it and think,
Oh, I like that design.
I'd like to wear thaT-shirt.
But we would have absolutely no idea
where the shirt itself came from.
And for what it's worth,
it's very bad practice
to include somebody else's trademark
on the specimen or drawing of your trademark.
That's usually not gonna work out very well.
In instances like this
where you want to create products
around a particular design,
or drawing or symbol or phrase.
You've got to really think about
how you're going to be using that design.
Let's say you've got a design
that you want to put on T-shirts and sell to the public.
How are you going to go about doing that?
In many cases from the people that I talked to at least.
They are going to go to one of these apparel websites,
where you can pick out the type of item that you want,
upload a photo of your design or your image,
and you can see it rendered on the product.
And then you hit order,
and that website company creates the products
and sends them to you.
And then you get to sell them to your customers.
In that case, it's actually the website company
that is providing those goods, not you.
When your customers receive that T-shirt in the mail,
with that cool design on the front,
the T-shirts will most likely
have some other company's name on the care label,
or on the tag by the collar,
or somewhere within the product itself or the packaging.
There's probably gonna be some other company.
And that's the company that actually created the product.
And therefore, they're the ones selling those products.
You're really just kind of selling the design on a T-shirt,
but the T-shirt itself isn't really your product.
'Cause you're not producing it, you're not selling it.
The overall moral of this story,
is that designs, photos and phrases
are not trademarks in enough themselves.
You can't seek trademark protection simply
for a design that you create,
and want to prominently place on a product.
If anything, these things are actually
more likely eligible for copyright protection.
Copyrights protect original creations,
and artistic expressions.
If you create a unique work of art
that you think will sell well on a T-shirt,
then that's a copyright my friend, not a trademark.
And really, we wouldn't want it to be a trademark.
Think about it.
Trademarks are specific to the goods and or services
with which they're registered.
So if you create a design and put it on T-shirts,
at best, you'll likely have a trademark registered
in class 025 for different types of apparel or clothing.
That means, in theory,
somebody else could use that same or a similar design
on completely unrelated products.
Because your trademark protection really only extends
to the goods or services with which you are using it.
A copyright, on the other hand,
applies to the creation itself.
And it has no distinction for how it's used,
or the types of products that appears on, none of that.
The copyright protection prohibits use of the design
in any form by any other person aside
from the copyright holder.
So then the big question is,
what do we do if we actually want
to start a clothing or apparel line,
and we have a unique design or image or phrase
that we want to use with that clothing or apparel line?
Well, we have to make sure we are using it as a trademark.
I typically recommend doing this
by including the trademark on the label
on the piece of clothing,
or on the care instructions.
Or you can attach a separate hang tag
to the product.
Which has that logo or design or that phrase,
whatever the trademark is.
Or you can have it appear on the product packaging,
something like that.
Or on product displays.
But the idea is that we're using it
in some way that's actually functioning
as a trademark.
And it's not just a design that shows up
on the front of a shirt.
That doesn't mean you can't have the design
on the front of a shirt.
It can be used in an ornamental fashion,
but it can't be merely or solely ornamental.
So if we've got the design on the front of a shirt,
but it's also on the label,
or it's also on the garment tag,
then that use is acceptable as a trademark.
Even though the front of it isn't necessarily a trademark.
The idea is that your customers need to know
in one way or the other that this product,
not just the image on the product is coming from you,
or coming from the trademark.
So the important takeaway here
is that inventing or creating a design or image
does not typically result in a trademark.
In many cases, it's actually copyright protection
which applies.
So if you have an image or design
or a photo or phrase or something else
that you're interested in registering as a trademark,
I highly recommend that you consult
with an experienced trademark attorney
before you start this process,
or go about doing it on your own.
Because a trademark attorney will
number one, be able to tell you
if it's actually a trademark.
And number two, they'll be able to help ensure
that the trademark registration
will ultimately be successful.
I am of course happy to assist.
If you are looking for help
with trademark registration for your business.
You can check out
my all inclusive trademark registration package,
Brand Bombshell.
Where I do every step of the process for you.
Or if you're on a tighter budget,
check out brandish DIY,
your trademark application.
Which is my on demand webinar
that teaches you step by step
how to prepare for, complete
and submit a trademark application with the USPTO.
Check the description to find out more about those.
That's all for this episode, folks.
Please drop a comment below.
Let me know what you think.
And again, don't forget to check the description
for links to some additional information and resources.
Thank you all so much for watching.
I'm Aiden Durham,
and I'll see you next time.
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