Clothing Trademarks: Size matters: Avoiding the dreaded “ornamental use” objection at the USPTO.

Over the years, I have had many clients apply for clothing trademarks.   In most of these cases, the client was introducing their own clothing brand, or various labels under that brand.   When attempting to show “use in commerce,” for these trademarks, one issue stands out: Having the trademark boldly displayed on the front of a shirt will not alone suffice to show use.

For example, having a catchy phrase such as “Always Late, But Worth The Wait,” etc., in large lettering on the front of a shirt will be deemed merely “ornamental” usage.   In other words, this type of use is considered mere decoration, and does not work as a “source identifier.”   This would be the same for a large logo design as well.   One of the key requirements of a trademark is that it “identifies a single source for a product or service.”  The USPTO has consistently held that large lettering and/or designs on the front of a shirt, do not act as a “source identifier.”

So what does work to show use for clothing?   In short, hangtags and/or labels will usually do the trick.   In the example above, it would be fine to have “Always Late, But Worth The Wait” in large lettering on the front of a shirt, but you would also need to have hangtags and/or labels with this phrase as well.   As long as you have the trademark consistently displayed in this manner (i.e., attached to each article of clothing), this will usually suffice to show “use in commerce.”

One notable exception to the merely “ornamental” use objection, are the small logos displayed on the pocket of shirts, such as those of the “Polo player” of Ralph Lauren® fame, or the “alligator” of Izod Lacoste.®  As noted by the USPTO, “(a) small, neat and discrete wording/design located on the pocket or breast portion of a garment (for example a small design of an animal), may create the commercial impression of a trademark…”   See TMEP §1202.03(a).

So when it comes to using a trademark in connection with clothing, it’s important to consider factors such as size, location, use on hangtags/labels, etc.  This is just another example of how things can be more complicated than they seem in the trademark realm.   If you are dealing with filing a clothing trademark, feel free to give me a call for a free consultation as to such issues.