Apparel Brands Must Consider Trademark Use in Launch From Day One

For apparel brands, the trademark question at launch is usually framed too narrowly: Can we put this graphic on the shirt? The better question is two-part.

First, will your own wording or design function as a brand, or just as decoration? Second, does the finished garment borrow so much from someone else that buyers may think the product is officially connected, sponsored, or approved? Mixing those two issues leads to avoidable US Patent and Trademark Office refusals on one side and avoidable infringement fights on the other.

Those inquiries use different standards. At the USPTO, the agency looks at the photo or other proof you file showing how the mark appears on the goods as sold. The question is whether buyers would see that use as branding. In court, the question is whether the overall product is likely to make buyers think there is a connection to someone else.

That is why large front-of-shirt displays are still risky for new apparel marks. In In re Lululemon Athletica Canada Inc., the Trademark Trial and Appeal Board rejected a simple rule that large designs always fail, but still held that a large wave design on the front of apparel created an ornamental impression. The lesson isn’t that a big design can never work. It is that when the proposed mark is the visual centerpiece of the garment, buyers often read it as decoration first and branding second.

Brands that want registration should build trademark use into the product from day one. Put the mark on neck labels, waist labels, hang tags, packaging, and product pages. Use the same placement across styles. Keep photos showing the goods exactly as sold. And don’t assume you can fix the problem later by swapping in a new filing photo.

Slogans deserve special caution. Many phrases work better as marketing copy than as trademarks. If the wording reads like a message, joke, or seasonal theme, a center-chest display by itself is often a weak filing strategy. Usually the better course is to let the company’s main brand name or logo do the branding work and treat the slogan as creative copy unless the company is prepared to use the slogan where brands usually appear and can show that buyers already see it as coming from one source.

Existing recognition can change the analysis. Under In re Olin Corp., 181 USPQ 182 (TTAB 1973), wording or designs on apparel can still function as marks when buyers understand them to point to the sponsor or brand behind the goods. A university name on a T-shirt is the classic example. The same logic can help well-known brand names, school indicia, or licensed entertainment properties. But that recognition shouldn’t be assumed. If the strategy depends on it, build the record with prior registrations, licensing history, marketing materials, and other proof that buyers already connect the design to your company.

Clearance is a separate project. A design may be too decorative to register as your own mark and still be risky if it closely echoes another party’s name, logo, colors, mascot, or other recognizable elements. Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co. and Pennsylvania State University v. Vintage Brand, LLC show why “it’s just decorative” isn’t a complete answer when the finished product can still look official or authorized. For apparel brands, clearance should test the whole presentation, not isolated pieces.

This matters most in the merchandise programs that move fastest: school-color capsules, vintage-inspired drops, collaboration collections, and print-on-demand storefronts. Those products are often built around graphics first and legal review second. Trademark law looks at them the other way around. It asks what buyers will think when they see the finished garment in the market.

When the USPTO says a mark looks merely decorative, the answer isn’t always a better legal brief. Sometimes the business needs to change the product presentation. Depending on the facts, the applicant may be able to use a different photo showing real brand use, argue that buyers already recognize the design, claim acquired distinctiveness, move to the Supplemental Register, or switch from a use-based application to an intent-to-use application and come back later with a better example of trademark use.

The same issue can return when it’s time to renew the registration (TMEP 1603.03 and 1606). If the brand drifts away from label, hang tag, packaging, or e-commerce uses and relies only on oversized decorative displays, it becomes harder to show continued trademark use.

At launch, apparel brands should decide what will really function as the brand on the garment and preserve proof of that use. Separately, they should clear the finished artwork for affiliation and sponsorship risk. Teams that do both early usually spend less time fighting decorative-use refusals and less time defending merchandise programs they assumed were safely decorative.

This article does not necessarily reflect the opinion of Bloomberg Industry Group, Inc., the publisher of Bloomberg Law, Bloomberg Tax, and Bloomberg Government, or its owners.

Author Information

Anton Hopen is a registered patent attorney and a shareholder at Trenam Law in Tampa, Fla., and counsels universities, technology companies, and founders on building, defending, and monetizing patent portfolios.

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