# Is establishing a trademark absolutely necessary for a clothing line or t-shirt company?



## Ultimate t (Feb 2, 2012)

Is establishing a trademark absolutely necessary?


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## tone1tees (Dec 24, 2009)

It depends on how bad you want to protect your stuff? i myself belive it's worth it if you are going to take what your doing serious if so it's money well spent.


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## Graphics Man (Jun 12, 2008)

If you have spend a lot of time coming up with a name, and it is unique. It is absolutely important. Go ahead do it. I used legal zoom.


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## kimura-mma (Jul 26, 2008)

No, it's not absolutely necessary. It is not legally required to register a trademark when launching a t-shirt brand.

As a startup, you should be focusing on production and marketing. You need to create cash flow. Spending money on something that will not make you money in return, is not money well spent at this stage.

That said, if you're budget allows for spending on trademarks without sacrificing production or marketing, then you should definitely trademark your brand name. But if you are working with a limited budget, then spend on production and marketing now and you can always file a trademark application later on. Trademarks are based on first usage in commerce. So you are not really losing anything by waiting.


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## moksha (Oct 28, 2007)

Protecting your mark is important if you are developing a brand. I suggest looking into registering your mark at the state level. It does come down to date of first use, so having some form of government recognizing the use of the mark will help you prove that you were using it already if anything arises. To register at the state level costs less than $100 for most states and its an easy process you can do yourself. Just google your secretary of state office and you should be able to download the application. In my opinion that is the cheapest and easiest way to get some protection secured.


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## Rodney (Nov 3, 2004)

Ultimate t said:


> Is establishing a trademark absolutely necessary?


To me, to actually sell product is more important than establishing a trademark.

Definitely make sure your brand is not already in use by another trademark.

But my *non lawyer* advice from experience is that the money you spend on a trademark would be better spent actually trying to make some sales (assuming it's an either/or thing)

If money is no object, then by all means spend the money and time getting a trademark starting out. Just make sure you spend as much time and energy (if not more) on your marketing and advertising plans.


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## Linz3v (Aug 3, 2011)

You can use the "™" next to all of your designs until you save enough money up to get it Federally registered which is the R in the circle. To get your clothing line federally registered the cost starts at $347. To have a legal business in general you must register your business with the state you live in


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## kimura-mma (Jul 26, 2008)

Linz3v said:


> You can use the "™" next to all of your designs


Just to clarify...
T-shirt designs are eligible for copyright, not trademark. So you shouldn't be using the ™ symbol next to designs.

But if you are using any original brand names or logos that you would like to claim common law trademark ownership of, the ™ symbol can be used for that.


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## mcohen17 (Mar 5, 2012)

There is a lot of misinformation on this board. The ultimate question is whether it is necessary to obtain a trademark for a start-up clothing line. The short answer is absolutely yes. 

There is some advice on this board that recommends no, because they say that you should focus on marketing and advertising because money is tight as a start-up. However, that is probably the worst thing you can do. If you are interested in creating a true clothingline, i.e., a new name brand, (rather than just simply selling generic shirts without a brand), then you must first conduct a trademark search first to determine if you can use that name. Then if it is clear, obtain a federal (not state) trademark for yourself through an experienced trademark attorney. Here is the true reason why:

Let's say you decide to forgo the trademark search and you are oblivious to other trademark holders out there. You produce your clothingline, start selling, and people actually begin to start buying and you create a buzz around your clothingline. At that point, people will begin to take notice, and it may turn out that you have unintentionally infringed upon someone else's brand. You may receive a cease and desist letter or even worse actually get sued. So now, the clothingline that you worked so hard to create must stop, as the Plaintiff seeks to obtain an injunction. This may not happen for months or even over a year later from the start of your clothing line, after you have spends $1,000's in production, marketing, and sweat equity. Worse, you may face a lawsuit and could be on the hook for $1,000's in attorneys fees or damages. 

I am a trademark lawyer, and this scenario above is something that I deal with on a weekly basis. I have so many calls of owners that are literally crying on the because they worked so hard to start their clothingline, but felt it was unnecessary to (1) conduct a trademark search first; and (2) file for a federal trademark. And it is usually after their line just starts to take off, they get a C&D letter or get sued. 

If you intend to only sell a few t-shirts here and there, and "fly underneath the radar" then you may be fine. But if you intend to make a legitimate business and create a big clothingline, then you must do it the right way from the beginning.


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## kimura-mma (Jul 26, 2008)

mcohen17 said:


> The ultimate question is whether it is necessary to obtain a trademark for a start-up clothing line. The short answer is absolutely yes.


The law does not *require* a trademark registration to start a clothing line. Are there benefits? Of course. But to call it necessary is untrue.



mcohen17 said:


> There is some advice on this board that recommends no, because they say that you should focus on marketing and advertising because money is tight as a start-up. However, that is probably the worst thing you can do. If you are interested in creating a true clothingline, i.e., a new name brand, (rather than just simply selling generic shirts without a brand), then you must first conduct a trademark search first to determine if you can use that name. Then if it is clear, obtain a federal (not state) trademark for yourself through an experienced trademark attorney. Here is the true reason why:
> 
> Let's say you decide to forgo the trademark search and you are oblivious to other trademark holders out there. You produce your clothingline, start selling, and people actually begin to start buying and you create a buzz around your clothingline. At that point, people will begin to take notice, and it may turn out that you have unintentionally infringed upon someone else's brand. You may receive a cease and desist letter or even worse actually get sued. So now, the clothingline that you worked so hard to create must stop, as the Plaintiff seeks to obtain an injunction. This may not happen for months or even over a year later from the start of your clothing line, after you have spends $1,000's in production, marketing, and sweat equity. Worse, you may face a lawsuit and could be on the hook for $1,000's in attorneys fees or damages.


Correct me if I'm wrong, but conducting a thorough trademark search and applying for a federal trademark registration are separate and independent processes. So it's possible to conduct a search, clear the brand name and use it without actually registering the mark. Wouldn't that lessen the risk of your example happening?



mcohen17 said:


> But if you intend to make a legitimate business and create a big clothingline, then you must do it the right way from the beginning.


The USPTO requires proof of usage before granting a trademark registration. So that would seem like they *expect* the mark to be used before applying for the trademark. So claiming that it must be done the right way from the beginning sounds a bit self-fulfilling.

Don't get me wrong, anyone who knows me on this forum knows that I believe in protecting intellectual property. So I know that registering a trademark is very important. But for someone starting a clothing line on a limited budget, it's not as important as inventory and sales. So I'm not disagreeing with you from the legal perspective. I'm disagreeing from a business perspective.


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## mcohen17 (Mar 5, 2012)

Hi Tim, I'm new to this forum, so I am going to cut and paste your quotes below to address them:

"Correct me if I'm wrong, but conducting a thorough trademark search and applying for a federal trademark registration are separate and independent processes." 

Yes, they are separate processes. The primary points of the search is to preemptively determine if (1) there is already the same or similar mark registered with the USPTO, and if so would the examiner reject it, therefore, you can decide to pick a different name that has a better likelihood of registering; and (2) make an educated determination of the likelihood of getting sued by a senior user (common law or federal registrant), so as to avoid a possible lawsuit. 

"The USPTO requires proof of usage before granting a trademark registration. So that would seem like they expect the mark to be used before applying for the trademark. So claiming that it must be done the right way from the beginning sounds a bit self-fulfilling."

The USPTO does requires proof of use before to ultimately granting the registration, however, they do not for filing an application. There are different ways to file federal tm applications. Many people file the application on an "intent to use" basis, which does not require a "specimen" i.e., proof of use.

I receive anywhere from 2-10 phones per day from new start-up clothing line businesses. Many people are starting on a very limited budget, so I understand how business owners can be very reluctant to spend money on a search or a trademark application. But they don't initially realize how important it is, and how easily they can get burned for failing to do it. Further, if you start a clothing line, you don't do it with the expectation of only making a few hundred dollars, people generally expect to have a successful clothing line to replace their current employment and to "hit it big." Many of my client have failed, but I have a handful that have started in their garage and now have contracts with some of the largest department stores in the nation. If you fail to clear the mark, and register it, such a mistake could literally be $100,000+ mistake down the road. 

Again, the worse case scenario, which I have seen frequently, is when clients have spent $5, $10, $50k, or more on production, inventory, marketing, etc. Then 6 months later they get shut down and face attorneys fees. Very often all of the that money is lost. I have seen this same story over and over again, that is why I continue to stress the importance of a trademark search and filing.


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## Austin300 (May 24, 2009)

My answer to the original question.


If you can afford it and your brand is important to
you then get the trademark as soon as possible.


My approach to business is pretty simple after 27 years
I still operate by the same motto.

If you're gonna be a bear.. Be A Grizzly.

Buy the best equipment you can afford.

Buy the best protection of your brand / business you can afford.


When it comes to an apparel line your brand is everything.


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## kimura-mma (Jul 26, 2008)

Hey Michael. Welcome to the forums and I appreciate you taking the time to respond.

I've been on this forum long enough to see many people who do expect to "hit it big." And often times, they tend to get very caught up with...
How do I trademark?
How do I prevent a screen printer from stealing my designs?
How do I ship to Europe and Japan (because I know my brand is going worldwide!)?

And I think these thought processes take away from things like cash flow, production, marketing, sales, distribution, etc. So while I do agree that protecting your brand is important, it needs to be properly prioritized along with everything else based on the specific budget and business model of the company.

For anyone on a decent budget, registering a trademark should be considered a legit priority.

But on a small budget, like $500, it can be crippling to spend $300 on a trademark. Because with only $200 to spend on inventory, the volume will be so small that the cost per shirt is through the roof. Which effects wholesale price, retail price, and ultimately, overall sales and profit margins. It's never a good idea for an unknown brand to price themselves out of the market, with absolutely no advertising budget, when they think they are in competition to steal market share from Johnny Cupcakes and Tapout. Because it's going to result in a box of t-shirts sitting in a basement because it's impossible to sell a t-shirt, that cost you $15 to make, at a sustainable profit margin.

My point is, the domino effect works both ways. For every person that calls you because they neglected to search and register, there is someone who goes out of business because they spent too much money on things with zero return on those dollars.

I believe you 100% that you get calls every day from people who neglected to search and register. But there's more than one way to launch a clothing line. From a business perspective, it's so important to create cash flow. Because without sales, the trademark won't be worth anything anyway.


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## mcohen17 (Mar 5, 2012)

Tim, thanks for welcoming me to board. This has been a fun dialogue. Yes, you are right, it is also a cost benefit analysis. If the legal fees eat substantially into your overall budget for the business, then it probably wouldn't make any sense. So for those on an ultra-tight budget, maybe a $1,000 or less, they would need to tread very carefully. But once their budget increases, hopefully they won't forget to follow-up with the search and filing. In the end, it should always be a goal to do sooner rather than later.


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## fdcarter (Jun 20, 2011)

Hey Tim. I wanted to comment on a portion of one of your posts in this thread. Here is the excerpt:



kimura-mma said:


> But on a small budget, like $500, it can be crippling to spend $300 on a trademark. Because with only $200 to spend on inventory, the volume will be so small that the cost per shirt is through the roof. Which effects wholesale price, retail price, and ultimately, overall sales and profit margins. It's never a good idea for an unknown brand to price themselves out of the market, with absolutely no advertising budget, when they think they are in competition to steal market share from Johnny Cupcakes and Tapout. Because it's going to result in a box of t-shirts sitting in a basement because it's impossible to sell a t-shirt, that cost you $15 to make, at a sustainable profit margin.


 I agree with you 100% that in regard to a newly formed T-shirt brand with a very small budget (in the neighborhood of $500), that there's no way they should make the trademarking of their company name the top priority at that stage (even though it should definitely be a _high _priority, to take care of once their budget can allow a trademark search and registration). The only reason why I started the process of getting one as soon as I could was because I was lucky to have had the financial means to do so right from the start (I've got a N.O.A from the USPTO for my name, but I've still got to file a specimen with them soon though, which is doable now because I've got the name printed to shirts finally), and because I just wanted to get the process started early because I found out it can sometimes take up to a year or longer to get the registration. 

I think you're also right about the potential for a new company to price themselves out of the market by spending too much on printed shirts for the first line, then having to offer the shirts for sale at such a high price (just to get their money back and make a decent profit), that their target market might not be able to afford to buy them, even though they like them and _would _buy them if they were more affordable.

I do think though, that nowadays a new T-shirt brand may have to spend a little bit of money (if they have the means to) to help set their shirts apart from those that other brands sell, to really make their brand stand out from the ooodles of brands out there (new and established) trying to sell shirts. 

I think marketing is key, no matter what the product is that someone wants to sell, and although having a large advertising budget would be a "huge" help to a new T-shirt brand trying to break in to the industry, I think nowadays if someone wisely utilizes all of the free advertising channels available (Twitter, Facebook, You Tube, Tumblr, Mailchimp, etc.), I definitely don't think its an "impossibility" for a new T-shirt brand to move shirts at a higher than the _average _price for a t-shirt (the $15-$25.00 range). 

I recognize that it could potentially be _tough _if a brand is just starting out no doubt whatsoever, and would take a lot of work, but I truly believe it can happen. I think it really comes down to the creation of a perceived value in the mind of a potential customer related to the products that a company is selling, that will then be a match with the product's price, no matter what the means (paid or free advertising and marketing). Once that's accomplished, the sales should come, even if a company is brand new.


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## ryan barker (Jul 21, 2011)

this is also another reason why i say one of people's biggest business faults is to go into it terribly under-funded. a lot of people seem to be in some kind of huge rush to get their shirts out, and six months later when none of their plans have worked out because they didn't put a dime more than producing a couple of shirts into it, decide they've failed.

some people just aren't meant to be captains of industry. i wonder how some people are even able to find their ways to work, let alone wind up being my supervisor.... 

if it's something you're going to stress over, if nothing else take a buck out of every shirt you sell and put it away towards trademarking.


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## idriftatl (Mar 5, 2012)

I would recommend trademarking your business name and logo. You don't want to put in all the money and effort to create and come up with something that resembles you and your company and then have it trademarked by someone else because they realize you didn't take the steps to do it. I also agree with many of the posts above take the necessary time to create buzz for your company and gain clients before spending the money for the trademark. Overrall it may seem expensive to begin with but it can save you a huge headache should someone else try to benefit from something you came up with. Hope this helps...I am also new to this so I understand your concerns..


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## FrontRunners (Mar 16, 2012)

What if you just TM in the state you operate in


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## kimura-mma (Jul 26, 2008)

FrontRunners said:


> What if you just TM in the state you operate in


Protection would be limited to that state only. 


ABrandWithNoName.com


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## MiEmb (Jan 29, 2011)

This is a really good conversation and a must read for anyone grappling with the same question. So thanks to everyone contributing to it. I am not an expert by any means on trademarking or copyrighting but having seen so many starting out with the best intentions but not focusing on basics of business at first, my vote will be focusing on making sure you have something your customers want to buy. Without a product and a business that "actually" sell there is simply not much else to worry about.


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