You can make big money selling T-shirts. Visit teespring.com and you’ll get the point. It’s no wonder that we get many inquiries about how to trademark images appearing on T-shirts. Typically, the T-shirt entrepreneur has a great idea for a t-shirt slogan or design and, of course, they want to protect it. So, the entrepreneur files a pro se trademark application and in short order it gets rejected by the U.S. Patent and Trademark Office (“PTO”). Why? Because a slogan or design silk-screened onto a T-shirt is not a trademark. The PTO designates such designs as “adornments,” not source identifiers. Then the entrepreneur calls us for legal advice.
Here are some pointers on how to avoid the problem:
1. Rid yourself of pre-conceptions. Trademarks are not simply buzz words, ornamental phrases, or pithy labels. Trademarks, in fact, have a special purpose. Here’s the official definition:
A trademark is any word, phrase, design or device that identifies the source of the goods identified by the mark.
Don’t even attempt to register the trademark for a slogan or design that simply appears across the chest or back of tee-shirt. It says nothing about the source of the t-shirt.
2. Create a trademark or brand that identifies you or your company as the source of your goods;
3. Make sure that no one else has registered the mark or is using unregistered versions of the same or similar mark. Why do we look for unregistered versions? That’s because you don’t need a government trademark registration to obtain trademark rights. If a business is using an unregistered trademark they are said to have “common law” trademark rights. Registration gives you other substantial benefits but not the right to use a trademark when another business may have used it or a similar mark first for the same or for related goods and services.
4. Mark your t-shirt with the trademark on a “hang tag,” or a small writing on the sleeve, neck or bottom of the t-shirt. When you do it that way, you will be using your brand as a trademark (i.e, a source identifier).
5. The most effective way to protect an image or design on a t-shirt or other article of clothing is to file a copyright registration with the U.S. Copyright Office. Copyright protection is strong protection for a reasonable cost.
If all of this sounds too complicated, we’re here to help. Give us a call for a free consultation.
— Adam G. Garson, Esq.