Throughout my experience with individuals within the fashion world, I came to a realization that many of these extremely talented people do not really understand the importance of obtaining trademarks for their brand(s). Many of these same people believe that they will have time to file for their trademarks after they have embarked on their brand’s journey. However, they fail to understand the consequences that may result from not taking proper legal steps and obtaining trademarks from the beginning.
Think about it, from the day a person is born, they are given a name that is registered with the government and used for identity purposes in order to differentiate and recognize that specific individual. Similarly, brands and companies need to be named in a manner that will work as an identity marker for their specific goods and/or services. Unlike people’s names, business brands usually cannot legally co-exist under the same or similar name if they are within the same or similar industry. Therefore, obtaining a trademark registration at the onset of the business venture is ideal.
Some individuals believe that if they are able to obtain a certain business name (i.e. LLC or Corp), then the trademark for that same name should be available. Nevertheless, this is not the case. Business names and trademarks are not associated. A business name can be incorporated if there are no other businesses with exactly the same name in that state. On the other hand, when a trademark search is conducted, if a registered mark in the same class looks or sounds similar to the mark being searched, then there is a high probability that the trademark office will reject the pending mark based on likelihood of confusion.
This lack of knowledge can be damaging to a lucrative business and can cost a fashion company several thousands of dollars in order to recover from pitfalls that are associated with these mistakes.
Although many fashionistas may argue that they do not need to obtain a federal trademark registration in the United States because common law trademark rights arise from actual use of a mark and not the registration of the mark with the United States Patent and Trademark Office (USPTO), this argument fails to recognize that without a federal registration of a trademark, it is hard, if not impossible, for a company to:
• Recover profits, damages and costs for infringement, including the possibility of receiving treble damages in certain circumstances; • Recover attorney fees in infringement actions; • Sue for infringement in federal courts; and • Block the importation of goods bearing an infringing mark via customs.
Also, if a mark is not registered with the USPTO, the owners of the mark cannot possibly properly protect their mark from infringers or individuals who simply have not been put on notice of this mark. By filing for a federal trademark, the registrants are putting the whole country/world on notice of its mark and the goods/services provided under this mark. In addition, the right to use the ® symbol in connection with the mark may deter potential infringers and put others on notice as well.
A company that fails to obtain a trademark for its fashion brand(s) also forfeits the ability to attain an incontestable status that a mark can achieve after five years of registration with the USPTO. This status serves to eliminate most arguments that the registrant of the mark does not have the exclusive right to utilize the mark. This sort of standing can eliminate many potential lawsuits in the future and save the business owner thousands of dollars in litigation.
One might ask what are other ways that trademarks can save money for a business? Well the answer is very simple. If you start using a brand name or logo for your goods and/or services and have not conducted a trademark search and/or filed to register your mark with the USPTO, you’re taking a huge risk. This risk includes the possibility that (a) someone else is using the same or similar name, which is trademarked, within the same industry and, therefore, your mark would be denied registration by the USPTO if or when you apply, (b) someone else is using the same or similar name within the same industry and, therefore, some or all of your marketing efforts will be directed towards the other person’s brand/company (c) someone else is using the same or similar name, which is trademarked, within the same industry and, therefore, you will need to re-brand in the future if the other company finds out that you are using a similar mark (d) someone else is using the same or similar name, which is trademarked, within the same industry and, therefore, they can sue you for damages OR (e) someone else starts using a similar brand name after you start using yours and files to register their mark with the USPTO before you do and, as a result, most likely you will need to file an opposition with the USPTO to get rid of this pending or registered mark. The foregoing processes can be costly and time consuming.
Hence, if you don’t do your due diligence and file to register your mark with the USPTO, there is a chance one of the abovementioned dilemmas will arise, and you will be forced to spend more money than what you would have spent if you filed to register your mark early on in your business venture.
Also, one must always remember that time is money. It takes about eight months to obtain a trademark if no issues arise during the trademarking process. However, this time period may be extended drastically if the examining attorney finds an issue with your application or if another trademark owner opposes your mark from being registered. Thus, any business owner can understand that if they file for a mark early on and something goes wrong, the loss will not be as grave to their company as if something were to go wrong years down the line when they have expended large amounts of revenue into growing their brand. Thus, waiting to file for a trademark after the brand has been established is a BAD idea.
Thus, the goal for most fashion companies should be to grow its brand to a point that its trademarks are associated with its products and/or services by customers at first glance. Once customers can recognize a brand, this means the brand acquired secondary meaning, which translates into that those trademarks being considered strong. For example, when a person speaks about the brand Gucci, everyone right away associates this mark with the fashion industry. When a company has strong trademarks, it can police its mark from infringers on a much higher level. Without acquiring federal registration for their marks, many companies cease to build a strong brand because the global market becomes flooded with similar names that, in retrospect, weaken the strength of its mark and the potential to recover in an infringement case.
Understanding the importance of trademarks is the first step to growing a fashion brand. Nevertheless, understanding how to choose brand names that will be strong trademarks is equally important. In order to start a fashion line, a business owner must come up with a brand name and/or logo, which will serve as a mark that represents its goods and/or services. If the mark is unique, arbitrary, or fanciful, the mark is considered strong. If the mark is generic, descriptive, deceptive, or scandalous and immoral, the mark is considered weak.
Generic Marks. Generic marks are not available for trademark protection because generic marks are generally the very name of the product or service. For example, a company that sells bananas cannot use the word “banana” as their brand name, or if a company sells athletic shoes, they cannot trademark the word “shoes” or ”sneakers.”
Descriptive Marks. Descriptive marks describe the goods or services. An example of a descriptive mark would be if a computer software company used the name “Software Assistance” as their brand name. Descriptive marks cannot be registered without proof that the mark has developed secondary meaning in the eye of the consumer public. Secondary meaning is recognition among buyers, and can be shown by widespread advertising or a presence of more than five years in the marketplace, or a survey from the relevant consumer population. Some descriptive marks that are known to the general public include After Tan, Chap Stick and Holiday Inn. Some marketing professionals prefer descriptive marks; so they put the marks on the Supplemental Register for five years (when secondary meaning is presumed) and thereafter, convert the mark to the Principal Register.
Furthermore, marks that are surnames or geographic locations are considered descriptive in nature. A mark that is primarily merely a surname is not trademarkable and would only be registered on the Supplemental Register initially. Only after the mark acquires secondary meaning can the owner of the mark transfer it to the Principal Register. A few examples of marks that were held by the USPTO as merely surnames include Dell (Dell Computers), Motts (Motts for baby food) and Marriott (Marriott for charitable services).
In addition, the USPTO prohibits registration on the Principal Register of marks that are primarily geographically descriptive of the goods or services offered. A geographic location may be any term identifying a country, city, state, continent, locality, region, area, or street (i.e. American Airlines). Nevertheless, when geographic terms are used in circumstances in which it is clear that they are meant to convey some meaning other than geographic origin, registration must not be refused on the basis of geographical descriptiveness (i.e. “Swiss cheese” and “Italian spaghetti”).
Deceptive Marks. Another type of a weak mark is the deceptive mark. Deceptive trademarks insinuate a component, ingredient, or objective that would mislead consumers. An example of this would be “Organic Aspirin” for a dietary supplement that is not actually aspirin (Bayer Aktiengesellschaft v. Stamatios Mouratidis). Additionally, deceptive marks that include geography are not protectable even if they are not material to the consumer’s purchase, such as, “Florida Orange Juice,” which is actually produced in California.
Scandalous and Immoral Marks. The USPTO bars registration of trademarks that consist or are comprised of “immoral, deceptive, or scandalous matter.” In re Mavety Media Gp. held that in order to meet its burden and reject a trademark as scandalous or immoral, the USPTO must show that the mark is “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable;…giving offense to the conscience or moral feelings;…[or] calling out [for] condemnation.” Some examples of immoral or scandalous marks include “BULLSHIT” used in connection with a handbag line, “1-800-JACK-OFF” used for adult entertainment and “DICK HEADS” used in connection with restaurant and bar services.
Offensive Marks. Prior to a recent court holding, offensive marks were not trademarkable. An example of such a mark was “Khoran” for wines, which was refused registration with the USPTO because it was likely to offend the Muslim population when used to denote an alcoholic beverage. Nevertheless, on June 19, 2017, the Supreme Court held that the government may not refuse to register potentially offensive names because this law violates the First Amendment. Thus, offensive marks can be registered with the USPTO today.
Arbitrary Marks. Arbitrary marks consist of words or logos that have a dictionary meaning before being adopted as trademarks, but that are used in connection with products or services unrelated to the dictionary meaning (i.e. “Apple” for computers). An apple is a type of fruit, and it couldn’t be used as a trademark in the agricultural sector. However, it can be registered as a trademark in association with computers. Arbitrary marks are registerable without showing secondary meaning and are considered the strongest type of trademark.
Fanciful Marks. Similarly, fanciful marks are made-up terms invented for the single purpose of functioning as a trademark. These terms do not have a dictionary meaning but are considered strong trademarks because of their uniqueness. Some examples of fanciful trademarks include Kodak, Pepsi, and Xerox.
Suggestive Marks. A suggestive mark is a word that implies or indicates a characteristic of the product or service that is being sold. However, suggestive marks are different from descriptive ones because the consumer has to use some imagination to understand what the product is. Examples of suggestive marks include Microsoft (software for microcomputers), Citibank (financial services), Coppertone (sunblock) and JetBlue (Airline).
Many individuals fail to see that a trademark is one of the biggest assets of a company. In recent years, fashion companies that have filed for bankruptcy have been able to profit off their trademarks. Without a strong trademark, a fashion company lacks control over its brand and fails to protect its marks against infringers, making its business weaker and susceptible to lawsuits. Therefore, obtaining a strong trademark and branding that mark is key to a successful fashion business.
Biana Borukhovich is the owner of The Law Office of Biana Borukhovich.