When a new client calls me for the first time consultation and they say they have already started their clothing line, or other business, and they have picked a name they love, I immediately discuss clearance and searching. Simply because you have picked a name that you are married to, does not mean you can use it. The worst case scenario is that you invest in a name and receive and cease and desist letter or worse a lawsuit telling you to stop and requesting damages and attorney fees. So the name you picked may very well have been trademarked by another company. That’s why it is extremely important to have an experienced trademark attorney conduct a search prior to the adoption of a name. Here are some common questions and my typical response to clients:

Client: But I have registered the domain name and got my DBA, so I am protected, right?

Trademark Attorney: Wrong, simply registering domain names and a DBA is not actual “trademark use.” To establish trademark rights, you have to actually use the trademark in interstate commerce. And more important have a federal trademark application filed for you.

Client: I have filed for a corporation using the name I want to trademark but I have not sold any apparel yet.

Trademark Attorney: You still have not developed any trademark rights yet. You need to use, i.e., sell the apparel with the trademark on it.

Client: I did my own search, and mine is different from another registered trademark I found, because the name I want to use is “X, Inc.” and their trademark is “X Clothing”.

Trademark Attorney: You will still most likely receive a rejection from the USPTO, because words such as “Inc” “clothing” “enterprise” “LLC” and/or “apparel” and deemed to be descriptive and do not typically distinguish your chosen name from other trademarks.

Client: I saw a registered trademark with the same name that I want, but they only sell snow wear, and we sell water sports related clothing.

Trademark Attorney: Since the goods are very similar, you will likely receive a rejection. Only in some cases you can avoid a rejection if the style and market channels of sales of the clothing are different enough.

Client: Ok, so what should I do?

Trademark Attorney: We should conduct a trademarks search. First, pick a good, unique, nondescriptive name, so I can conduct a comprehensive trademark search, after which I will discuss with you possible conflicts in light of other existing registered or even pending trademark applications that have priority over your proposed new name.

Client: What if I have been using the trademark for many years but I never asked an attorney to file a federal application with the USPTO. And now there is a new guy on the block with the same name as me selling the same or similar products.

Trademark Attorney: Let’s investigate to see if you have a claim for trademark infringement. Also, if he filed a trademark application with the USPTO, we may also be able to file an opposition or cancellation proceeding in the Trademark Trial and Appeals Board.

International Rights

So when you file for a trademark application for me, am I protected throughout the world? No. Filing a US trademark application with the USPTO will only afford trademark protection within the United States. In order to protect and enforce your trademark against others in different countries, we must file in those individual countries. You must contact me and discuss exactly which countries you are interested in so we can obtain a quote and determine the proper procedure for filing. Sometimes, there may be a streamlined and more inexpensive method to file international trademarks such as using the Madrid Protocol system rather than filing applications in each individual country.

These are only some of the issues regarding trademarks and intellectual property in general. As with any legal issue, always consult with a specialist, namely a trademark attorney before you start or invest in your new venture or line of clothing.