Trademark Protection for the Fashion Industry

Steven Weigler

Founder, EmergeCounsel

What is a trademark?

Trademarks are source indicators. A trademark can be a word, phrase, or design and is used to identify a brand’s specific goods and services in the marketplace (Lanham Act §45, 15 U.S.C. § 1127). As the brand matures, the trademark generally increases in value.  

How does trademark protection apply to the fashion industry?

In the fashion industry, having a recognizable trademark is essential to establishing a strong brand identity. Consumers want to trust the brands they shop with and registering a trademark is the first step to building a brand that consumers will come to remember and develop loyalty toward.

As an example, the Italian fashion house Gucci is the most popular online luxury brand in 2021. (FashionistaLuxe Digital) Gucci leverages an extensive trademark portfolio in the United States to protect its brand name and logos.

When can a fashion company apply for trademark protection?

A fashion company can apply for trademark protection when its mark is being used in commerce or before commercial use with an intent to use application. The company must show the mark in use with the goods or services described in the application. 

To illustrate trademark use; a brand offering shirts can show the mark on the neckband label. Or if the brand is selling handbags, then the mark could be embroidered on the inside label. 

In this product page for an “Oversize washed T-shirt with Gucci logo,” Gucci properly shows the mark on the inside label to indicate Gucci is the source and uses the registered trademark symbol (®) with the logo on the front of the shirt to show the logo is a protected trademark. 

Credit: https://www.gucci.com/us/en/pr/men/ready-to-wear-for-men/t-shirts-polo-shirts-for-men/oversize-washed-t-shirt-with-gucci-logo-p-440103X3F059045
Credit: https://www.gucci.com/us/en/pr/men/ready-to-wear-for-men/t-shirts-polo-shirts-for-men/oversize-washed-t-shirt-with-gucci-logo-p-440103X3F059045

There is a strategy in filing trademark applications to protect a fashion brand. As a fashion company, you will work with your attorney to choose International Classes for a trademark application, of which there are forty-one classes, divided into goods and services. Fashion companies commonly file in Class 025 for clothing and footwear, Class 018 for bags and purses, or Class 035 for retail store services.

As an example, Gucci America, Inc. registered the mark “GUCCI,” Serial No. 88626997, with the USPTO in multiple classes, including handbags, tote bags, and luggage in Class 018; tops, dresses, and jackets in Class 025; and retail store services for clothing, footwear, and fashion accessories in Class 035. If your company sells many different items, then protecting the trademark in multiple classes is essential to protecting those goods. 

What other branding opportunities are available?

Many fashion brands also have a logo, which can be protected with a design trademark. Logos are commonly displayed on clothing, bags, and other fashion accessories. In our example case, Gucci uses the double G logo on clothing, scarves, and luggage. A recent trend is for consumers to gravitate toward items with bold, repeating logos to visibly show the world the brands they support.

Once a fashion brand has cultivated consumer recognition of its trademarks for its core products, there is value in using those same trademarks to reach new consumers in similar markets. Companies often license their brand name and logos to third-party manufacturers to branch out into new markets with cosmetics, perfume, and sunglasses.

In the current fashion industry landscape, the growth and success of a company are increasingly dependent on memorable branding, which in nearly every case builds on the foundation of protected trademarks. 

If you are looking to establish, maintain, and/or protect your fashion brand, we provide free initial consults, schedule yours here