How To Trademark Your Clothing Line the RIGHT WAY
Is it time to register your line for a trademark? Join us as we interview Trademark Attorney and founder of Trademarks the Spot, Laurie Marshall. If you’ve ever wondered how to trademark your clothing line, what are the regulations, and how long it takes, then this is for YOU!
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Christine: So, tell us a little bit about your background and how you got started with your business.
Laurie: Well, I went to when I was in college, I was working on a creative studies major, what that is I don’t really know, was it like theater or you graduate, you have no idea what to do with that degree and then you panic for a day or two and say okay I have to go to a law school. I think that’s a lot of people do, so I went to law school, didn’t know what I was going to do in law school and then I stumbled upon this trademark class and the teacher was great, she was fabulous and everything she said struck a cord with me.
I started remembering that when I was younger, I used to be 6-7 years old walking through the supermarket with my parents and I would notice if the Pop Tart changed their packaging and used a different logo, different stylization, not something a normal 6 or 7 year old would do. I started to really feel like considering I also was creative in my college years, I kind of drifted towards that type of law, was a more creative law. Now everyone wants to be in the trademark, copyright, or entertainment type of lawyer but back then it was something pretty unique and I started working at a law firm thereafter doing trademarks and I spent most of my time doing trademarks for major-league baseball, which to me was the epitome of what a trademark lawyer because you are protecting logos that people are so passionate about. You know people are passionate about their teams and essentially their teams boil down to their hat with their own logo on it, so it’s a fun type of organization or fun types of trademarks to protect for an organization like compared to Johnson & Johnson. But you know, you have your Yankees and your different clubs that they feel passionate about along with them. All of their logos and trademarks which is just really fun, so that’s where a big chunk of my career was, I mean baseball and then thereafter I left and went to a law firm and then I kind of started my own law firm and it happened for me.
I have actually started to look for another job and then just I got contacted by a lot of the Major League baseball clubs so I still work for them, I work for the NBA, I work for a lot of large organizations and then I work for really small, itty-bitty companies. I realized while I was looking for a job and taking on all these clients at the same time that I didn’t have enough time to be looking for a job, so I am like okay well maybe I have just created something. So, I stopped looking for a job and I started focusing more on this business that created around me and I kind of have to figure out how to actually do accounting, obviously hire more people to help me with that and build this business about seven years ago.
Christine: That’s great, that’s awesome, I know a lot of our designers are working full time and they are trying to transition and they would love to have their business and that’s really-really inspiring to hear that. So talk a little bit about trademarks. Why they are so important and why do brands need that protection?
How To Trademark Your Clothing Line Step #1: DON’T Try To Do It Yourself
Laurie: Yeah, well that’s a big one, especially when it comes to small companies and that's why I like working for both sides, for big companies and the small companies because I can understand what the smaller people need to do to avoid brushing up against issues especially with bigger companies which is what they should want to try to avoid as much as possible and the thing about trademarks is when you start out your business, not enough people know the issues you can get into with regard to trademarks and essentially they usually have a to-do list and trademark somehow falls towards the bottom of that list. It really needs to go to the top of the list. When you think about it rationally, you spend this money either you come up with a name yourself or maybe hire a name or ad agency to help you with the name, you pay money to do that, you pay money to have graphics designers create logos, you buy domain names, some of my clients actually spend $5000 on a domain name that wasn’t initially available but then that was the name of their company so then they bought that, they create social media handles, all of these, they hire someone to create their website and they do all of these without even making sure that name was available and that is not what you want to do!.
I can speak from the depth because I have clients who have made that mistake. They do all these things and then they come to me because somebody actually tells them a horror story or something similar and they are like I think I need to get my trademark done-- I think I am at that point after I have spent $10,000 on all these other things and fortunately a lot of times I tell them that name is not available, they think it is available because they've searched it, they have googled it, they have even used the trademark system, the TESS system which unfortunately people are enrolled into. They think that if they do a trademark search on this system and no trademark comes up, then no one owns it so they can use it. But that’s not the case-- there is even a disclaimer on the trademark website that says not to rely upon the results here.
If you want to use the mark you should hire an attorney to check for it, because the TESS system is not comprehensive; it’s not giving a full look at all marks that could be confusingly similar. That’s an important word because most people think someone has to own the identical mark for it to be a problem. But that’s not the case, it just needs to have a similar commercial impression, so it could be a different mark, but that kind of reminds you of your mark and the trademark office will say too similar which is not okay. So your search isn’t going to pull up these similar marks and also a layperson can't really analyze it to know whether these two marks are too similar or not, so that’s the unfortunate part. So people believe that they have gone through the process of doing what they need to, some people don’t even think that they need to go through the process, some people don’t even know that there is a process.
So those are the different issues and then a lot of times people will rely upon people that have helped them and they are important to them, it could be their CPA, it could be their corporate lawyer, some kind of mentor and they will rely upon those people and if those people tell them not to worry about a trademark,so they don't realize that it's important. To be honest with you, some of these – even other attorneys tell their clients that trademark is not something they need to worry about right now. So that's the unfortunate part and that's why to me this is a big deal-- this is something that everybody needs to really worry about because it could devastate them. Why?
If somebody goes out with a mark that’s not really available to them and then somebody else who owns the mark sends them a letter, it is what we call a cease and desist letter, it will say you need to destroy all of your products.
And if we are talking about fashion, I have clients who actually put the mark on handbags like they inscribed it in the handbag, they spent a lot of money to do this, now they have to destroy their products because somebody else owns this mark. So I have seen some really unfortunate situations that people have walked into and if you're just starting out-- it kind of could devastate your business. You have to spend all this money on legal fees, get rid of all your product, and come up with a new name. So many people have released products that they had to destroy and a lot of people were about to have products in Walmart and Target and then they decided at the last minute let me make sure my mark is clear can you do it in 24-48 hours, my stuff is about to appear on the shelves and I am like no it’s not clear, you need to stop this right now because the last thing you want to do is put your stuff in these stores and then they hear that you want to pull out that’s already out there, they will never want to deal with you again.
Christine: You only have one shot I tell my clients all the time, especially with stores and buyers. So, if someone is looking to get a trademark, how should they go about doing that-- how should they go back and consult with you?
Laurie: Well, I guess for me, I specifically created my law firm, and I don’t like to call it a law firm because I feel like that’s so not personal-- I hold people’s hands through the process, but they can just go to my website tmthespot.com. I actually like everything to be transparent for my clients, so I put all of our pricing on our webpage. We do everything by packages so people know exactly what they are paying. I had somebody call me today and we were talking and so he said you don’t even understand how much I spent working with other big law firms. I hate to talk bad about anybody but big law firms aren’t necessarily looking out for the smaller guys, so…
Christine: And that’s why I wanted to have you come on because I feel like that’s your specialty, like you really try to work with these small entrepreneurs. We have the same heart. We really want to help people and we try not to make our prices ridiculously expensive so you guys can afford us.
Laurie: This is all I do, you know I do trademarks, I do some copyright issues, but essentially I know what I know and I don't know what I don’t know, so if something else is needed, I have lots of other attorneys I work with who can handle other things that are already found and I know that they are great attorneys. I have a patent attorney that I work very closely with, I have a corporate attorney and it’s helpful to have these people in my network.
How To Trademark Your Clothing Line Step #2: Only Register In the Countries That Are Most Important
Christine: Exactly, so you can recommend people that you trust. So a lot of my clients ask me if they should get protection in the US and overseas. How important is that and what’s your take on that.
Laurie: That’s a good question and I get a lot of people who call me up and say I want protection in the United States, Europe, Asia, and they will name 40 countries. They basically ask me for International Registration.
It sounds great but that's all that it is, so we have something called the Madrid Protocol which is a treaty that hundreds of other countries have signed on to and what that means is if you get a registration in your home country which right now is somewhere in the United States, you can actually take that application registration and extend it to multiple countries.
So, really what I tell people is the least it is going to cost you is probably $1000 per country. It usually will get higher and higher because you are going to have all these issues that you have to deal with in each of these countries. China is a big issue and I say to people if you are going to register outside of the United States, China is one country you need to focus on if you are in luxury goods. There are a lot of pirates there and they want to trade-off of others goodwill-- that's one problem. The other problem with China is they are a first-to-file country which means that the first person to get into the trademark office to file the application has a better right, so what happens is these pirates look through magazines and look through US magazines and they start looking at what celebrities are wearing and I have a client whose dresses were being worn by multiple celebrities, so she didn't really focus on this but the pirates saw this and as soon as they saw her in this magazine, they rushed to the Chinese Trademark Office and filed an application with that companies name. Then they start competing against that real owner, so it becomes a real problem in China unless you are the first one to get to the trademark office.
Christine: They are using it in commerce?
Laurie: In the US, we are a “first to use” country which means that the first entity that used the mark can have the best rights, even if they didn’t trademark it. But in China you don’t even have that luxury-- in China, it’s the first person who gets there to the registrar, so I tell my clients when you feel like your mark is going to get some traction, get your mark registered or file it in China before the magazine comes out with your name in it. That’s a really important country to focus on.
With other countries, if you are selling one or two products there, you obviously have an internet site and you are selling potentially to people in other countries, but that’s not a reason alone just to spend thousands of dollars to get a registration in those countries. When a significant part of your business is done in those countries then yes, it’s probably going to be worth it for you. Take baby steps, I always say to take at the inception of the trademark process because with big firms one of the big issues is they are used to working with larger companies. I have a small business client who had filed her mark in 25 other countries – but she didn’t sell one product. So we ended up dropping half of them because they were not going through.
Christine: So, don’t go crazy in the beginning every one, do the US and possibly China and if you are planning to sell in other countries, you will get to that when you get to that.
How To Trademark Your Clothing Line Step #1: Register Your Tagline As Well
So, taglines-- you have an amazing tagline! I love it. Do you have to trademark the tagline?
Laurie: It’s a good question. People think that a tagline is just a tagline, you are just kind of saying something additional about your products or services and that is certainly not the case. Essentially a trademark is anything that you use to sell your goods and services-- so if you are using a tagline to sell your goods and services then yeah it is treated the same way as a trademark. The only difference is that it is very descriptive. If you are just saying “the best jackets in the world,” you know you are saying something very vague and descriptive, you can’t really own the best jackets in the world, but if you got something catchy TM’s trademarks the spot, just do it for Nike, if you got something catchy that doesn’t specifically describe what you are selling like the best jackets in the world, then it is going to be something that you need to worry about two-fold, one making sure you are not taking someone else’s, that might even be somebody’s trademark that you are already thinking, it might be actually somebody’s brand, you might be using it as a tagline but it doesn’t matter, they all fall under trademarks so that’s something that’s being used to sell your goods or your services.
Christine: So, my tagline is “turning your passion for fashion into a reality” that’s probably too vague I assume.
Laurie: No, not at all, yeah, it’s very catchy.
Christine: So, I need to trademark my tagline, I am so bad at this.
Laurie: Oh, I said it was two-fold and one is I want to make sure nobody else owns it, two is you want to make sure that you get your adequate protection. So when you go through the trademark process and you’re cleared, one of the most important parts of the process which people either try to do themselves or whatever, so once you know it’s available to you and you finalize it, you have to pay the trademark office $225 per class per application.
Classes are categories of what your products fall in, clothing is class 25, handbags are class 18, so those are probably the categories to use the most. So once you have filed your application at the trademark office, you are paying $225 for the trademark office to actually work for you and I think that's nothing for the amount of work that they're doing to actually make sure nobody else can come on the register with the same or similar names as yours. So they are actually protecting it for you for $225.
The trademark office is going to say “No, you can’t have this, somebody else already owns it.” There are some other fees that could come into play, but essentially that registration lasts for 6 years. Another important thing I must get out there is you must maintain your trademark, if you don't maintain it, if you don't pay your dues so you are using your mark, you are going to lose it. Well it’s between your fifth and sixth year, between your 9th and 10th years and then every 10 years thereafter. It’s good to have a trademark attorney. We keep track of all of our clients and notify them of what’s coming up. We ask if you are you still using it and if you are, you’d send us a sample of your use. WIth trademark’s the policy is, if you don’t use it you lose it. So they want to get all the dead wood off the register because there aren’t a ton of marks that are available. I have people go through five, six, seven marks until we find one that’s available, so they want to try to remove the deadwood people that are not using the mark so it becomes available. That’s why you have to show use and meet these deadlines.
Christine: Okay, good to know, I did not know that. What are some common myths?
Common Myths About Trademarks
Laurie: Trying to search themselves-- they think that they could search it.
Christine: To be honest, I thought that you could just go to the TESS website and search.
Laurie: I mean you can but they are only giving you a small piece of the story. They might rule out a mark because they think that they found a mark that is too similar but when I look at it I notice the mark is not too similar, there is enough coexistence that they can actually coexist in this field or the mark is about to die. I do some work and I found out that we can cancel it-- so sometimes somebody might rule out a mark by doing their own search and somebody might think a mark is okay so either situation is bad.
So that’s a common myth that people think if they could go through this process on their own. I think 1 in 10 can get it on their own. I think that happens unfortunately is if somebody doesn't and that 1 of those 9 people who file something that's not really available then they come to me and they say take me out of this, how do I get out of this and I they come to me, they file the application, it’s not what they do and they did it for a friend and they are like I did this and I didn’t think I was going to get into this issue, so take me out of this. The problem is once you have already filed an application on your own and you kind of dig yourself down a rabbit hole, sometimes you can’t get out of it because you have already put your cards on the table, you can't kind of get around this and I might guide you into applying for a slightly different mark feeling like that and better coexist but once you have applied for this mark, the trademark office is going to know this is the mark and there is nothing you can do about it.
Another myth that I get a lot of is that the domain name was available so therefore the trademark has to be. I get that all the time. People come to me and say you don’t have to worry about your mark because I know you will be able to trademark because the domain name is available. I normally have a slide that goes like this when I am giving a presentation and on my slide it has a bunch of available domain names and I will just talk about what they are, so one is www.amazonperpetrator.com, www.starbuckscoffeehouse.com available, so all these domains: names are available, do you think you can use Starbucks Coffee House as a trademark or any of those others, so I used to try to explain to the people why is that such a misnomer. You can’t rely upon the fact that a trademark is available if the domain name is available and I had a really difficult time, really reducing it to understandable concepts but then when I actually use this exercise to show people look at all these domain names.
It’s impossible for a company to register every single variation of their mark with other words. It just can't be done, no matter how big the business is, so that's a common misnomer. Another misnomer and this is probably the most popular misnomer, that someone will tell me they have their corporate name already like an S corp or C corp or a limited liability part thinking that they don’t need a trademark. They don’t understand that absolutely nothing to do with the other thing. The function of a trademark is to prevent consumer confusion where two products are sold side-by-side. It prevents someone from buying the wrong product.
The purpose of a corporate name is to shield you from liability. So if someone buys your jacket and it catches on fire, no one can sue you personally, but they can sue your company instead. So registering for a trademark is totally different from registering as a corporation or LLC. I usually tell people not to worry about the incorporation but seriously I don't think that there are a lot of reasons to get an L.L.C. and S corp, C corp whatever unless you feel like right at the beginning you are going to have some liability.
Christine: I usually tell my clients the same thing, don’t rush to get that right away. Let’s start, let’s get your trademark. Trademarking your fashion line and business is important.
Laurie: Right because if you are using your name you want to make sure that’s clear but if you are not really out there selling it, if you don’t really do business as of yet, it’s really not that important that you have an LLC.
Christine: And for most fashion designers, it takes them six months to years to make their first sample so you are not selling during that time.
Laurie: You can register your mark in your own personal name-- you don’t need a company name to actually mark it. We can actually assign it later on once you do have the exact company name.
The Difference Between a Trademark and a Copyright
Christine: So, I know people always ask me what’s the difference between a trademark and a copyright?
Laurie: My husband actually loves when I tell this little analogy which states the difference between a copyright, trademark, and patent. So when you think about a television set that the brand that you buy is like a Visio or a Sharp or a Sony that’s a trademark. Those are the names of the brands of the TV. The shows that are broadcasted on the TV are works of art--people wrote the scenes, they wrote the script, that is a copyright because it is a work of art. The way that the TV is designed-- whether it be a flatscreen or has some sort of pixelation. Those internal components are the patent.
Can You Copyright Your Designs?
The intention of a trademark is the source of origin-- for people to see a beautiful jacket and see who makes it. Copyright is completely different; the intention of a copyright is to protect somebody’s work of art-- that can be a beautiful design, a poem or a book. All those are works of art and they are protectable under copyright.
Christine: So, if someone wanted to protect their designs, they could potentially copyright the sketch? You raised a really good point, because this is a very tricky area.
Laurie: So if somebody wants to protect a design, a design on fashion, they can protect the sketch or maybe a flower design in the print, but they can’t protect the actual jacket.
Christine: So, copy-writing a sketch, it is something that’s someone would do?
Laurie: A sketch of a design, yeah you can copyright the sketch and the print that I put on the jacket and I would say get as much as you can. Copyrights are 35 dollars each if you file it online you go to copyright.gov, it’s a complete opposite from what I say about trademark – trademarks go through a lawyer, go through the right process. Copyright I say the complete opposite, people actually call me for copyrights and I am like you can do it on your own, just go to copyright.gov, you fill up the form, it’s very consumer friendly, the way you fill it out, it’s 35 dollars and you know what if you mess it up, it’s only 35 dollars and there is not a lot of ways to mess up a copyright filling, so it’s a good way to get some protection, so I would say just do it.
Christine: And people ask me all the time, how long does it take to find out if you actually get the trademark?
Laurie: So we normally hear back from the trademark office after three months and they let us know if the mark is cleared with no issues. More times than not, there are certain issues and usually they can be handled pretty easily. All of our packages actually cover these smaller objections at the end.
Then there’s a 30-day period when it goes to publication. Publication means that third parties have the opportunity to contest and large companies actually have watching services that will notify them if a similar mark comes up for publication and that’s when they will say this is too similar to ours, we are going to go after them and so forth. So that’s the 30-day period and then the mark has to go through the rest of the process usually between the 6th and 7th month mark period when it can get registered. It’s actually not a lot, when I started, this process was like a year and a half. The price has gone down too, when I started everything was 325 dollars, now it’s 225 dollars.
Laurie: If you have any questions about trademarking your fashion line you can email me email@example.com, feel free to get in touch with me, I am very accessible to my clients and to my friends.
Christine: Laurie is wonderful, she will really work with you and hold your hand. Her website has all of her packages with all of her pricing. You don’t have to worry about how much is this going to cost and all that kind of stuff, so it’s really good. Well let me see if there was any other question that we didn’t get to. If I'm using the brand name and the logo symbol, do I trademark them together or separately?
How Do Register Your Logo?
Laurie: That's a great question, so it really depends. First of all, if you file your trademark in a block letter fashion which means kind of like typing it on the computer, that will give you the broadest rights possible. What that block letter mark means is that you have a right to use that in any kind of stylization with any design that you want, which is great as it gives you tons of flexibility.
You can use it one way for five years, then change it to another way and your registration is still good. You can sell your company along with that and if somebody doesn’t like the way you have been using it, they could do a different thing with it. It’s great, but considering it gives you such broad rights, it’s more likely to conflict with others. We are finding that if we have certain issues we need to work around, we can actually file it in the logo to try to differentiate ourselves from these other people. The whole trademark thing is a real game sometimes because as I said, there aren’t a lot of marks available, so we have to figure out how to make a mark that’s unavailable, available.
Once you have that registration, it’s is going to be a lot easier to get a subsequent registration because what we can do on the second one is that we can claim rights in that first one and the trademark examiner is much more likely to allow your subsequent application to go through because you already own one for a similar mark, so we can claim that in the second one and then we can get a lot broader with our application. So we do this a lot, we do this whole strategy to try to get a client exactly what they wanted and it might take 1 to 3 applications to actually get there but we do it in a way that you actually wind up with something.
Christine: So, it may be beneficial one way or the other, really depends on what’s available.
Laurie: Exactly, if the mark looks super-duper squeaky clean, I want to file in a block letter, I will get the broad right. If the mark you know is kind of like what I call the Swiss cheese, we kind of have to avoid certain holes, then I might file it with a logo so that I can show that it has got more distinctiveness to it than just the words.
Christine: Can you do both, can you do the words and the logo in one trademark application?
Laurie: Only if they are viewed together as a logo, but if they are separate, you can’t do that. In the UK, I don’t know if it is still true but, in the UK, you used to be able to get protection of variation of your mark all in one application.
Work With Laurie
Christine: Oh, that’s great, so that’s it guys, thank you so much Laurie. It was helpful information, again you guys can contact Laurie at firstname.lastname@example.org.
Laurie: Shoot me an email if you want to get in touch with me. Usually I like to get an email and then we can set a time to talk and I also give free 15-minute consultations.
Christine: Yes, so set up a time, you can see her for 15 minutes, she will give you her time for free, you guys can talk about everything that you need. Her website is https://www.tmthespot.com/ and all of her information is on there. Thanks again Laurie for teaching us how to trademark your fashion brand, and what exactly goes into it!
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