When businesses create new and interesting designs, logos, band names and slogans, one of the first problems they tend to worry about is caused by the potential popularity of that design – preventing its use by unauthorized companies trying to cash in on the same creative idea that led to the product being on the market in the first place. 

This is particularly true when the design is going to be applied to clothing or other gift items, such as keychains, coffee cups, mugs and stickers, because anyone can make a t-shirt, but not just anyone can come up with the creative design that will make someone want to buy a t-shirt.    

Generally, businesses launching a new product and wishing to protect the branding associated with that product can turn to either copyright and/or trademark law for protection. Copyright is generally the easier, but often less-effective, way to protect a new design. A registered copyright can be used to prevent people from copying a design or part of a design verbatim but cannot be used to protect the work under certain circumstances. 

For example, short phrases are not subject to copyright protection, so a slogan cannot generally be protected by copyright. Similarly, the U.S. Copyright office will refuse to register stylized letters even if there are some minimal graphic elements presented with the stylized letters.  Simpler images may also lack the requisite level of creativity to be protected under copyright law – for example, a stick figure may work well as a design but is likely not creative enough to be protected by copyright.

That leaves trademark law, which is specifically designed to protect the use of a short phrase or image as a brand identifier. Trademark law can be used to protect things copyright law will not protect, such as slogans and simple images, and it provides broader protection. Not only will trademark law protect against the use of the same exact design, it will also protect against the use of a “confusingly similar” design. 

As a result, imitators will not be circumventing your protection if they change minor aspects of a design when selling the same or a similar product. 

In addition, trademark law can be used to prevent a competitor from using the same or a similar design on different but related goods or services. For example, if a competitor uses a similar design on a website that sells clothing but does not print the design on the clothing itself, they are still infringing the rights of a trademark owner that owns that same trademark for clothing. 

Similarly, if someone owns the rights to a trademark on t-shirts, then a competitor placing a similar mark on other clothing items or even sunglasses will be infringing the rights of that trademark owner. 

However, business owners registering a design for clothing or similar merchandise tend to run into a particular problem at the United States Patent and Trademark Office (USPTO) – ornamental refusals. If the design is not something the USPTO and Courts will think a consumer will view as a source identifier for that product, then the design is not functioning as a trademark. 

This can be a significant issue when selling gift items, such as clothing, coffee cups, mugs and stickers, as the design is often the most prominent feature of the product.  However, there are some nuanced rules regarding how the design should be presented to consumers to be protected as a trademark. 

For example, using a design on the breast pocket of a shirt is viewed differently than using it to decorate the front of the shirt. Because space is limited on coffee cups, shirts, stickers and keychains, businesses wishing to protect a design used with such items need to be careful they use the design in a way that will be perceived as protectable.    

Careful planning is always part of launching a successful new product line. Those businesses wishing to do so should strategize how they are going to use and protect their design from imitators prior to launching or they could lose a lot of potential sales revenue. 

Russell is a native of Wilmington, N.C. and has been practicing law in Eastern N.C. since 2004. Prior to that, he worked in Chapel Hill and Durham as a research technician on teams exploring RNA-based gene therapies, viral fusion inhibitors, and the role Galactocerebroside plays in protein localization near nodes of Ranvier. After passing the patent bar in 2003 and becoming a registered patent agent, Russell received his law degree from Georgetown in 2004. He began his legal career representing clients in personal injury matters but later left personal injury to provide patent prosecution services to law firms in China and Taiwan prior to joining The Humphries Law Firm in 2014. Russell helps individuals and businesses protect their innovations, creations and business information using strategies based in patent, trademark, copyright and trade secret law. His work includes both strategic planning and dispute resolution. He assists clients who want to buy and sell businesses, and license or transfer their intellectual property assets. Russell also assists with the firm’s litigation practice, particularly in insurance and employment disputes.