When it comes to developing a fashion industry trademark, or tradename, thinking outside of the box can be your best bet. Consider sounds and smells, as source identifiers. Most of us are familiar with the NBC Chimes, registered trademark #0916522, for “broadcasting of television programs.” First used in 1961, the well known NBC Chimes were originally used so radio listeners would know when an NBC program ended. To this day, consumers hear the musical notes “G, E, C” and associate it with NBC, which makes its owner NBC Universal Media, LLC very happy.

Developing Fashion Industry Trademarks & Tradenames

From the CLE class: Fashion Law Basics: The Lawyer Wears Prada

Maria Vathis has a broad range of experience defending corporate clients in complex business litigation matters, insurance coverage, and class actions involving alleged violations of federal statutes, including the Telephone Consumer Protection Act. Ms. Vathis has represented financial institutions, investment firms, law firms, brokers, attorneys and other professionals. She handles matters nationwide in federal and state courts.

Patrick McKey
has a practice that concentrates primarily on complex commercial litigation and international business disputes, as well as corporate counseling. For over 10 years, he has represented a range of clients in the fashion industry, including Bruno Magli, Coach, Dana Davis, Giuseppe Zanotti, Harajuku Lovers, Italian Ready to Wear (“IRTW”), Kid Robot, L.A.M.B., Oilily and Vicini. He has represented many of these clients in all aspects of their operations, from intellectual property and licensing issues to commercial litigation, contract negotiations, and import/export issues.

In this CLE class clip, Patrick and Maria discuss developing fashion industry trademarks & tradenames.

Watch the Full Fashion Law Basics: The Lawyer Wears Prada CLE Class

The strength of a trademark is key. Trademarks are categorized on a continuum from generic, which can never gain protection, to fanciful, or arbitrary, which are inherently distinctive. Denim Pants, for denim pants, is a form of generic trademark. Going for a bit more description trademark, we have American Apparel for clothing. Then we have the suggestive type of trademark, Topman for a clothing line for men. Last we have the fanciful type of trademark, like LULULEMON for Yoga apparel, or arbitrary, like Express for clothing.

Personal names generally cannot be trademarked unless consumers associate the name with particular good, or services. Fashion designers often use their names to identify clothing brands. Michael Kors, for example uses his name as a trademark for retail store services in the fields of clothing, jewelry, and clothing accessories.

Trade dress protects product’s design, or particular attributes. This applies only to “aesthetic” rather than “functional” attributes. This is difficult to identify, when the design of the product itself is functioning as source identifier.

For more information on developing fashion industry trademarks & tradenames, check out the complete CLE class video, presented by Maria Vathis and Patrick McKey.