"Ornamental" Rejections for Apparel Trademarks

A logo or brand printed on a shirt or baseball cap might not be a trademark.

• Learn about common trademark mistakes that could jeopardize your brand’s success.

• Understand the difference between a brand logo and a legally protected trademark.

By the end of this article, you’ll know how to take the necessary steps to protect your clothing brand, safeguard your apparel logo, and avoid costly mistakes that could impact your business.

The use of a brand in that way could be seen as a decoration, or merely “ornamental." The actual trademark is usually printed on the sewn-in tag or on the hang tag where you usually find the price. That is where the brand acts as a "source identifier.".

In order to qualify as a trademark, the brand must be a “source identifiers.” In other words, a consumer would have to be able to look at the branding and know which company is offering the goods or services. When a consumer sees a design on the front of the shirt, it might register as just a design. However, consumers know that the tags are where the brand name can be found. Sometimes, a brand on the front of a shirt or hat can act as a trademark, if the logo is not predominant and looks like a brand instead of a decoration.

This issue arises then new apparel companies come out with their first batch of clothes, but print their logo on the front of plain customizable clothing, such as Hanes or Gildan. The tags will still say “Hanes” or “Gildan.”

As part of the United States Patent and Trademark Office (USPTO) application process, you are required to show that your trademark is being used on your products as a source identifier. For apparel, a common option is to submit a photograph showing the trademark on an article of clothing. Unfortunately, if the photo only shows the brand name on the front of the shirt or hat in a way that looks like a decoration, you will likely receive a rejection from the USPTO. The only way to overcome the rejection is to show your brand name as a source identifier, such as on a hang tag or a sewn-in tag.

Gwyneth Paltrow's Health and Beauty Company, Goop, Sued For "Reverse Confusion" Trademark Infringement

Last week, Good Clean Love, Inc. (GCL), an Oregon-based woman’s personal hygiene and health company, filed a Trademark infringement lawsuit in Federal District Court against Gwyneth Paltrow’s beauty company, Goop. In its complaint, GCL asserts multiple claims, including federal trademark infringement, false advertising, unfair competition, and analogous claims under Oregon state law.

The root of the dispute is that Goop is allegedly using a tagline that is confusingly similar to GCL’s house brand. GCL says it has used “Good Clean Love” for its line of sexual health products for over 20 years, while Goop has used “Good. Clean. Goop.” for its similar sexual health supplement for a much shorter time period.

In order to determine whether there is a “likelihood of consumer confusion,” Courts look at not only the similarity of the trademarks themselves, but also the similarity of the underlying products. Trademarks do not need to be identical - it is enough if they are similar in sound, appearance, meaning, or commercial impression. If, overall, there is a likelihood of confusion, whoever used the trademark in US commerce first, has superior rights, and can stop the junior user from continuing their use of the infringing trademark.

The Goop case is a good example of a “Reverse Confusion” trademark infringement, where a newer bigger company comes onto the market and overwhelms the trademark and commercial standing of the older company, who actually has superior rights, despite being smaller.

“Reverse Confusion” occurs when a newer, bigger company comes onto the market and overwhelms the commercial standing of an older, smaller company’s brand.

In addition to impacting their sales, GCL worries that the confusion will damage their reputation. They allege that Goop uses known harmful chemicals in its products, whereas GCL’s products are “truly clean.” If consumers start to think that Goop produces the GCL’s product, consumers will also believe that GCL’s products contain these harmful ingredients.

Goop, on the other hand, called the lawsuit “meritless.” Interestingly, according to GCL, the day after Goop received GCL’s pre-suit cease and desist letter, they doubled down with their use of the infringing tagline, flooding the market. We will see if this is predictive of how Goop defends their position.

Filing this law suit does not come without risks for GCL. Because their house trademark is comprised of basic words in a somewhat descriptive order (“good”, “clean” and “love”), it could be deemed generic. This would leave them at risk of a viable counter-attack by Goop, which would be a devastating loss for the company. The reality is, there may come a time when a trademark owner finds themselves in a defensive position. The stronger a trademark, the easier it is to defend, which ideally will inform a company owner during the process of choosing their brand name.

More IP Trouble for OpenAI as US Trademark Office Issues Final Rejection of their ChatGPT Application

A few months ago, the New York Times sued OpenAI for using their copyrighted materials in ChatGPT’s language models, which we wrote about in this article.

Now, their application for registration of the main ChatGPT trademark received a final rejection from the US Patent and Trademark Office (“USPTO”). The USPTO Examining Attorney deemed their trademark "merely descriptive" under Trademark Act Section 2(e)1. This designation means that the trademark merely describes “a feature, function, or characteristic" of the goods or services offered.

As we discussed in this article, in order to qualify as a trademark, a brand name needs to be distinctive enough to serve as a source identifier. In other words, a consumer would be able to look at the branding and figure out which company is offering the goods or services. There is a spectrum of trademark strengths, which guide this analysis. If the trademark is too weak, the application might suffer a final rejection.

Merely descriptive trademarks fall on the weaker end of this scale. The trouble with descriptive trademarks is that a consumer might see the brand and think it is a description of the product, and not a designation of which company is making it. Two of the big reasons for this prohibition are, first, to protect the consumer from potentially getting confused about which product comes from what company, and, second, to protect brands from their competition monopolizing a common word or phrase used in the industry.

Here, the USPTO position is that because ChatGPT is both a chat and a "Generative Pretrained Transformer" (or GPT), it falls squarely into the merely descriptive category.

OpenAI has one more chance to respond to the rejection with a Request for Reconsideration. One way around this type of rejection is to argue that even though the trademark is not inherently distinctive, it has, through use, acquired distinctiveness under Trademark Act Section 2(f). The attorneys for OpenAI have taken this approach, despite the challenges of a successful 2(f) claim.

Interestingly, what we did not see, is a good old-fashioned argument against the conclusion that the trademark as a whole is not merely descriptive, even if its parts may be. Regardless, if this application fails, their similar logo application did not get the same rejection, so they will have something to work with.

A "Shoe"-In This Time, or Will They Get The Boot Again? Timberland Asks Appeals Court for Trademark Protection Over Their Iconic Footwear

Timberland is asking the Fourth Circuit Court of Appeals for trademark protection over their iconic boot (not just the name or logo of the company, but the boot itself!)

The shoe company first filed their unsuccessful trademark application to the United States Patent and Trademark Office nearly 9 years ago and have been appealing their way up the ladder since. Now, they will have to convince the Court that their boot is distinctive enough to serve as a brand, and that the design of the boot has no function.

Product configuration trademark protection is extremely hard to come by, but they are not unheard of, for shoes in particular.

More on this soon.

Jury Sides With Kat Von D in Copyright Infringement Lawsuit Involving Miles Davis Tattoo [Repost of Sarah Stemer's Article Featured In Trademark Lawyer Magazine ]

(This article was Originally Published February 15, 2024 in The Trademark Lawyer Magazine online newsletter.)

A Los Angeles jury has sided with tattoo artist Kat von D (Drachenberg) in a copyright infringement lawsuit filed by photographer Jeffrey Sedlik. 

The high-profile case centered around an image that the reality TV star inked onto a friend’s arm, based heavily on Sedlik’s photograph of Miles Davis. Now one of the most famous photographs of the late jazz musician, Sedlik’s shadowy portrait of Davis with his finger over his mouth “shushing” the viewer, was first published in JAZZIZ Magazine in 1989. 

Sedlik, an artist’s rights advocate and intellectual property consultant, filed his action against Drachenberg in a California District Court in 2021 seeking roughly 45,000 USD in compensatory damages or 150,000 USD in statutory damages, for copying protectable elements of his photograph and using images of the tattoo on her social media account.

Whether Sedlik’s image is covered by copyright was not in dispute, instead, the case hinged on whether Drachenberg’s use of the photograph fell under the Fair Use exception. Fair Use, a common and robust defense to copyright infringement, is most often seen in cases of commentary, criticism, and parody of an original work. In determining whether Fair Use applies, courts look to several factors, including how similar the original and copied works are, how the work was used, and how the use of the work impacted its value. Drachenberg claimed that the Fair Use defense applied, because the tattoo was not “substantially similar” to Sedlik’s photograph, and she tattooed her friend for free.

Sedlik’s position was that even though the tattoo was a favor for a friend, Drachenberg’s various social media posts of the tattoo were commercial in nature because they were intended to promote her tattoo services. Sedlick argued that Drachenberg’s use of the image without a license disrupted his ability to sell licenses to other tattoo artists, which he has done in the past. 

Sedlik took the stand and explained that each element of the photograph, including the lighting, background, and pose was meticulously planned and arranged by him. By tattooing the image onto her friend’s arm – even though the image was slightly altered – Drachenberg still infringed on Sedlik’s rights. 

Drachenberg testified that tattoo artists do not get licenses for tattooing photographs. Her attorney later added that she had to stand up for tattoo artists by fighting this case while Sedlik’s attorney assured the jury that this case was not about stifling the tattoo industry but about requesting permission and respecting art.

After less than three hours of deliberation, the jury sided with Drachenberg and found that the tattoo was not “substantially similar” to the portrait and that her use was not for a commercial purpose. In response to the verdict, Sedlik’s attorney said that “no one’s visual art is safe,” while Drachenberg is calling it a victory for the tattoo industry.

Ultimately, whether Fair Use applies remains a case-specific question. While the ruling from this jury was that this very tattoo was not “substantially similar” to the original image, the result does little to protect future tattoo artists from the opposite ruling with a different tattoo.

The fight between Sedlik and Drachenberg, seemingly having adopted the cause of their respective industries, is not quite done. Sedlik’s attorney believes the issue of “substantial similarity” is not a fact that should have been decided by a jury but instead is a matter of law to be decided by a judge. They plan to appeal that very issue.

Stemer Law’s Colorado IP Troll Case Heats Up, As Judge Issues Stark Warning

A few months ago I wrote about a Law360 article that quoted me calling my adversaries “trolls” to a Judge in Federal Court.

Those cases are still moving along, somehow.

In case you missed it - over the summer, a California bong-maker, GS Holistic LLC, filed nearly 50 identical cases in the District of Colorado, alleging that dozens of Colorado smoke shops were intentionally selling counterfeit versions of their bongs. In true IP-Troll fashion, the mass of complaints filed by a Florida law firm were copy and pasted, with big scary words intended to intimidate Defendants into settling, but without any meaningful facts or allegations.

Well, Federal Magistrate Judge N. Reid Neureiter caught wind of these robo-filed cases and issued a strongly-worded Order to Show Cause, requiring Plaintiff and Plaintiff’s lawyer to show up in person to assure the Court that they have a legitimate basis for their cases and that they plan to litigate according to the rules. We all gathered in court for the September hearing, where things seemed to get back on track.

That did not last.

Fast forward to January 12, 2024, after Plaintiff failed to follow local rules, federal rules, and deadlines, the Judge issued another biting order. In the order, which is the subject of the latest Law360 article about the cases, he called out Plaintiff for their “chaotic” prosecution, saying he has “no confidence” they can successfully work on this case load. He issued a stark warning too - if they continue their violations, he may end up dismissing all of their cases.

While the January 12 order did indeed “chide” Plaintiff, as the Law360 headlines says, it is my opinion that it also shows the the District of Colorado and Magistrate Judge N. Reid Neureiter's commitment to finding a fair result for all litigants, in spite of the complications that these mass filings have created. As I am quoted as saying in the Law360 article - "the record is clear that the plaintiff has been given a multitude of chances to course correct, but they continue to flounder.”

Not as blistering as calling them trolls on the record in open court, but it is still the truth … and what I said about my clients is also the truth, "…the Defendants, as small business owners, are an important part of Colorado's culture and economy and will not be cast aside."