In this article, we’ll break down the steps you have to take to protect all of your designs from getting copied or used commercially without your approval.
Your merch designs aren’t as safe on the internet as you think without registered trademarks.
Anyone can be an artist, that said anybody with an internet connection can create a design and post it online.
Everything seems easy but there’s actually a risk that someone will copy your design and post it on their website.
This may also go both ways! Questions like, what can you do to protect your design might arise.
The internet work is easier than the internal work.
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There are two types that mainly cover t-shirt design protection; these are trademark and copyright.
But here, we will only on trademark law and how to apply it to protect your merch designs.
Trademarks
Trademarks are symbol/s or word/s registered legally by use as a representation of a company or a merch. It protects your merch design or art.
Trademark in the U.S. is established by using the mark even if it’s not actually registered.
However, there are procedural advantages to registering your mark.
Registering your trademark is for you to prevent your competitors from stealing your merch design’s name, logo, or slogan.
It is important to protect your symbol, logo, or phrase as it is one of your business investments.
A lot of businesses may lose their logos due to not being able to register them.
This move will also protect your rights, and by this, we strongly advise that you protect your merch designs by trademark.
What are the steps to protect your merch with a trademark?
- Clearance – This is the first step you should always do, conducting a clearance search. It may be the holiday shopping season, but the term “clearance” here has nothing to do with a huge discount. “Clearance” in the trademark world means to conduct a search before a trademark application is filed or your start using the mark in order to assess whether the mark you have selected is sufficiently different from all other marks. Marks are analyzed based on similarity to other marks. If your mark is found to be too similar to another mark for related merchandise, then it would be highly advisable to establish a different one.
- Application – Filing an application is the next step with the U.S Patent & Trademark Office. Filing online is also okay, use a law firm that is traditional or a cost-efficient trademark company like Tademarkia. Then you’ll need to choose a filing basis. A use-based application (also known as a “1(a) application”) means that you are already using your mark in commerce. You will need to submit proof of use with your application. If you’re not yet using the mark in commerce, then you can file what is referred to as an Intent to Use application (also known as a “1(b) application”), which essentially holds your place in line until you can submit your proof of use.
- Proof of Use – POU is a “specimen”, which is an example of how you’re actually using the mark in commerce. For a t-shirt, this might be the label or tag or even the design on the shirt itself. If the mark is too large, then this is referred to as “ornamental use,” and the USPTO will issue what’s referred to as an “ornamental refusal.”
- Ornamental Refusal – An ornamental refusal is when the USPTO refuses registration because your POU shows that your mark is merely a decorative feature on the t-shirt itself rather than an indication of the origin of the merch.
- The slogan is technically a service mark for advertising the legal services themselves, but let’s pretend for a moment that we wanted to use it on a t-shirt. If we emblazoned it across the front of a t-shirt, prospective buyers likely wouldn’t view it as indicating that the t-shirt comes from my firm, but rather would view it as a decorative feature of the shirt.
- Determining whether something is ornamental is not a cut-and-dry issue. You must look at the overall commercial impression. One of the key factors the USPTO looks at is the size and location of the design. If the mark is emblazoned large across the front of the shirt, this would weigh towards ornamental use. But a small, neat, and discrete word or design over the breast portion (think a polo player on a horse, for example) of the t-shirt or near the neck opening on the back of the shirt may be interpreted as a trademark.
How do you overcome ornamental refusal?
- Submitting Alternative Proof of Use – The best way to overcome an ornamental refusal is to submit a substitute POU showing actual use of your mark in connection with your merch. Amending your dates of use if your substitute POU was not in use in commerce as of the dates in the application or Statement of Use.
- Secondary Meaning – If you don’t have the mark on a tag or label, you still may be able to overcome an ornamental refusal if the design has acquired secondary meaning as a trademark. Acceptable evidence of use and promotion for showing secondary meaning includes:
- Advertising and promotional materials that specifically show or promote the applied-for mark as a source identifier;
- Dollar figures for advertising devoted to such promotion;
- Dealer and consumer statements indicating recognition of the applied-for mark as a trademark;
- Other evidence that shows consumer recognition of the applied-for mark as a trademark for applicant’s goods.
Generally, the length of time that you’ve been using the mark is not considered sufficient to establish acquired distinctiveness.
- Supplemental Register – If you don’t show the mark on a label or tag and cannot meet the standard for establishing acquired distinctiveness, then you’ll want to amend your application to seek registration on the Supplemental Register, which is a second trademark register where trademarks can be registered that are not yet eligible for registration on Principal Register, but may, over time, become a source indicator.
Overall, for all legal issues, it is helpful to consult with an attorney.
Wrapping Things Up
Trademarks help protect your design or merch, especially since the web is a free space and anyone who has an internet connection may actually use your merch designs and make them their own.
It is also a law so it is important that you register your trademark and follow the abovementioned steps.
Although it may seem tedious it will definitely help your commerce or business, especially with your merch designs.
This step for your merch design business will help you with your long-term business goals.
This step for your merch design business will help you with your long-term business goals.
Thank you for reading, and we hope you found this useful. If you have any questions or you want to follow us for more related discussions, follow us on Twitter.
