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5 Reasons Why Your Fashion Trademark Might Be Refused

June 22, 2021 Fashion Law

Trademarks are refused for multitudes of reasons. But here are five of the most common reasons why a trademark might be refused the minute the application is in the hands of an examiner:

Letters and Number in Trademarks:

While letters and numbers in trademarks are generally a good thing (especially if they are arbitrary and not functioning as a recognizable word), sometimes they are a reason for refusal. Why? Because if they are used only to indicate size, model, style, capacity, or grade, they’re not being used in a trademark sense and therefore are not subject to trademark protection. Instead, strong trademarks like Chanel No. 5 or Seven Jeans are the way to go when attempting to secure a trademark.

Personal Names:

A Gucci wasn’t allowed to use his own name. Yes, you read that correctly. Although there are many brands that use personal names- Alexander Wang, Christian Dior, Ralph Lauren, Tory Burch- this doesn’t always work. One reason is that personal names are not always inherently distinctive. Many people may have the same name (have you googled yourself?). A second reason is that courts prefer to permit people to use their own names in commerce, and may end up fashioning a remedy that allows an individual as much leeway as possible to use his or her own name while still preventing a likelihood of consumer confusion. This issue has come up many times in the fashion law context. Hence my mention of Mr. Gucci. But also think about that recent case involving that designer who can no longer use her own name.

Generally speaking, an individual has a much higher chance of being able to use his or her personal name if the name has acquired a “secondary meaning.” Secondary meaning essentially means the consumer’s association of the mark with a particular source or sponsor. Secondary meaning can be established by showing continued and long use of a mark, extensive and expensive advertising of the mark, and the mark’s widespread, national public recognition. The lesson here is that personal names must have secondary meaning to be protectable.

Geographic Terms and Foreign Words:

This reminds me of the current news regarding Michael B. Jordan’s attempt to trademark “J’Ouvert,” but that could be a separate post in of itself! You can read more about that here, if you are so inclined: https://www.buzzfeed.com/vannessajackson/michael-b-jordan-jouvert-rum-cultural-appropriation-backlash

Geographic terms can be trademarked, but it is difficult because they can be characterized as being merely descriptive. As a result, they will receive less rigorous trademark protection. If used in a completely arbitrary way, a geographic term can be protectable, especially when combined with other non-generic, non-descriptive words. Likewise, if a geographic term is used widely over a long period of time to point consumers to a particular company, such as “American Airlines,” the mark can also be strong and protectable.

The use of foreign words as trademarks can also be extremely problematic. This is because of the “doctrine of equivalents,” which means that most foreign words will be translated into their English counterparts and then analyzed for descriptiveness purposes.

Basically, if you want to use a geographic or foreign word, it is best to combine it with another word.

Generic Terms and Common Phrases:

Usually, courts refuse to register, or rather enforce, trademarks that consist of terms that merely describe the particular product. An example of this would be “TWEED” as a name. This would be considered generic because it merely describes the type of fabric from which an item is made.

Descriptive Words:

Fashion brands should also be wary of names that suggest something that the product is not actually made of. An example of this would be Gwen Stefani’s brand “L.A.M.B.” While ultimately accepted, there was a concern initially that the mark was “deceptive” for footwear, clothing, and accessories not made of lamb. The Trademark Trial and Appeal Board ultimately reversed this decision and concluded that the “L.A.M.B.” mark was perceived by relevant consumers and the trade as an acronym for “LOVE ANGEL MUSIC BABY,” which is “arbitrary with respect to Applicant’s identified clothing, headwear and footwear.” In re Lamb-Grs,LLC, No. 77756492, 2014 WL 5282244, at *1 (Sept. 30, 2014). Also see: https://www.lexology.com/library/detail.aspx?g=d55d6bfa-ea8a-4733-b0a5-3120383f194d

Again, the point is, be careful about how you name your fashion brand and you can avoid these common issues!