I have written previously about the difficulties – or at least the special issues – involved in registering a trademark in connection with clothing. There is an unfortunate disconnect between the way the Trademark Office views trademarks on clothing and the way the public sees them. Until that disconnect is corrected, however, an applicant seeking to register a trademark for clothing needs to follow the advice of its attorney and file the application very carefully. A good, candid discussion should always take place between any attorney and client that is planning on submitting a clothing trademark application.
The recently-released case In re Lululemon Athletica Canada Inc. (here, and reviewed nicely at TTABlog) illustrates the risks involved in a trademark application filed in connection with clothing. The Trademark Office follows a very conservative policy that often conflicts with real-world understandings. Lululemon filed a trademark application for a variation of their mark emblazoned across the entire front of an article of outerwear. The Trademark Office refused registration of the mark as merely ornamental, a common rejection when the goods are clothing. The applicant argued that other companies are now using “large marks” to indicate the source of the clothing, a practice that has changed and broadened from the common left breast logo that many companies have used. Because of this new practice, it argued, consumers recognize and understand large marks to function as source-indicators, and thus, allow the designs to function as registrable trademarks. The Trademark Office rejected that argument, however, stating that “the design is not inherently distinctive and instead is merely ornamental.”
The Trademark Trial and Appeal Board acknowledged that “[i]t may have once been the practice in the clothing industry to limit logos to small sizes in discrete areas rather than to have them ’emblazoned’ across a garment. … [but it] is no longer the industry practice, or at least no longer the only one.” This, of course, is not a recognition or agreement that a “large mark” is a trademark, but is instead merely a statement that even a common rule generally viewing left breast logos as trademarks may no longer be reliable. Not helpful for those new clothing companies using their logos in this fashion. Nor was it helpful for Lululemon: the Board agreed with the Examiner on the ornamentality, stating that the design looked more like piping – or decoration – than a trademark.
The lesson is here is to be extremely conservative when planning a trademark application on clothing. More exotic uses of a mark must be considered risky, and clients should carefully weigh that risk.