Trademark Applications: Are your marks together or separate?

 
Image: Carmen Caserta, New York City

Image: Carmen Caserta, New York City

 
 

This article addresses how to file trademark applications when a fashion brand has more than one identifying mark.

What is a trademark?

Trademarks are signposts; they are symbols, usually in the form of words and/or graphic designs, that indicate the source of a product. In legalese we refer to trademarks as “source identifiers” or “marks.” The name of your fashion brand is a trademark. If your fashion business has a logo, that logo is also a trademark. These identifying marks are the badges that communicate to the world that your fashion company is the source of the apparel product to which the trademark is affixed. In the world of high fashion, trademarks are often a brand’s most valuable asset, hence the multitude of multi-million dollar trademark infringement litigation (cue the fiercely protective Chanel, Levi’s, Louis Vuitton…).

Can my fashion business have more than one trademark?

Fashion houses often develop a number of source identifiers that make up the brand’s trademark portfolio. The two most common marks are (1) the name of the brand presented in a custom-designed font; and (2) the logo. For example, Gucci is the name of the fashion house, and the interlocking Gs design is the monogram logo; each is its own individual trademark. Balmain is the name of the house, and the new interconnected B and P (the “B” indicating the name of house and the “P” symbolizing the name of its founder Pierre Balmain and its headquarters in Paris) is the logo. Also think Louis Vuitton and its LV monogram, Tom Ford and its TF, and Saint Laurent and its storied YSL.

Monograms are not the only way for fashion brands to add logo identifiers to their label: Versace’s logo is the head of Medusa as pictured above, Brooks Brothers trademarked the Golden Fleece symbol (a sheep suspended in a ribbon) back in 1850, and Polo Ralph Lauren can be identified by the iconic image of a polo player atop his horse.

Each source identifier or “mark” requires trademark protection; after all, it’s not just the name of a brand that can be ripped off by counterfeiters and copyists. Logos get imitated, too.

Do I have to file a separate trademark application for each of my fashion brand’s marks?

You don’t have to, but you probably should.

When you file a trademark application with the United States Patent and Trademark Office (PTO) in hopes of getting your mark registered, you must upload and submit an image of the mark you are seeking to register. When the examining attorney at the PTO reviews your application, she considers the image you submitted to be one mark. So, if you submit an image depicting your brand name together with your logo, you are in fact applying for registration of that exact image - not for the two marks (name and logo) separately. If your mark is approved for publication, the mark will be protected only and exactly as it appears in the image you submitted in your application. That means the two separate marks (name and logo) are not protected individually, and, theoretically, a competitor could still make use of similar marks.

Bottom line: If you want protection for each of your marks individually and the flexibility to use your marks in any configuration you want, (e.g., logo atop name, logo beside name, logo underneath name, logo behind name, logo alone, name alone, etc.), you must file a separate application for each mark.

Yes, this can get costly. Fees and legal costs involved with filing trademark applications provide incentive for startup fashion brands to create strong brand identities by limiting source identifiers to one or two distinctive marks and investing in marketing and advertising of those marks to build brand recognition. Then, when your clothes are being worn by the most influential of influencers and selling out across multiple digital platforms and in the biggest names in brick-and-mortar, (i.e., you’re making lots of money), you can start expanding your trademark portfolio with additional identifying marks.