Trademark is likely the first area of IP that fashion brands think about. It’s the name or symbol that will appear behind a runway, on a website, or on a hangtag. This post discusses trademark law protection for fashion brands, and the relationship between trademark and counterfeiting.
The first post in this four-part blog series on fashion and intellectual property (inspired by the end of New York Fashion Week last week) touched on the protection of fashion designs under U.S. copyright law. This post focuses on the role of trade dress in the fashion world.
As New York Fashion Week comes to a close, it seems appropriate to discuss how intellectual-property intersects with the fashion industry. Fashion is one of the trickier areas when it comes to intellectual property protection, especially copyright. If you launch a fashion brand, IP knowledge is definitely something you might want up your sleeve (pun 100% intended).
Many business owners are vaguely familiar with the trademark registration process. Without fail, though, when a business wants to register its trademark with the U.S. Patent and Trademark Office (or “USPTO”) the first question is “How long until I get my registration?” Of course, the answer is “it depends.” Are you using the mark yet? The answer to that question matters when it comes to registration.
Keep in mind that there’s never a guarantee that submitting an application for federal registration of a trademark will result in registration. Nonetheless, the federal trademark registration process usually follows one of two paths:
The Trademark Registration Process: The Use-Based Application
Step 1: File the application along with a “specimen.” The specimen is usually a photo or image showing use of the mark in connection with your goods or services.
Step 2: Approximately three months later, an Examining Attorney at the USPTO reviews the application. Upon review, he or she will either:
- Approve the application for publication (meaning there are no visible issues with the trademark application); or
- Initially reject the application by issuing an Office Action. Rejections can be on substantive or non-substantive grounds. (An example of substantive grounds? The existence of a confusingly similar mark that essentially “blocks” your application. A non-substantive ground is asking for revisions to the description of your logo.) An initial rejection is not the end of the world — in fact, many times, the stated issues are surmountable.
Step 3: After the application has been examined (and/or after you’ve adequately addressed an Office Action), the mark passes through to “publication.” This means that the content of your application is posted in the Federal Register. Then, third parties get thirty days to file an objection to your application. (This usually happens when that third party owns a mark similar to yours and feels it would be damaged by your achieving registration in the mark).
Step 4: If no oppositions are filed, the mark should proceed to registration. The typical timeframe from the date of filing to the date of registration (if no Office Actions are entered) is anywhere from six to ten months.
The Trademark Registration Process: The “Intent-to-Use” Application
Filed if you have not yet used your mark in commerce, but have a bone fide intent to do so.
Steps 1-3 above also apply to an Intent-to-Use application, with a few differences. First, you can’t file an Intent-to-Use application with a specimen, because the you haven’t begun using the mark yet (so, there’s nothing to submit). Instead, after Step 3 (the publication period), the Examining Attorney issues a “Notice of Allowance.” Then, you have six months from the date of the Notice of Allowance to either:
- File your specimen, showing proof of use of the mark (along with a filing fee); or
- File a request for a six-month extension (along with a filing fee). An applicant can file for an extension up to five times.
Once the Examining Attorney approves the specimen, the application should proceed to registration.
So there you have it — the trademark registration process in a nutshell. If you wish to apply for federal registration of your trademark, feel free to contact Spear IP below.
What’s next? Click here to download your [free] Essential Legal Checklist from Spear IP.
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