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Designs as Trademarks?

Sometimes.  Maybe.  It depends. A trademark is a source identifier; its purpose is to inform the purchaser of goods or services of the source of those goods or services. A design can be a trademark, but not when it is decorative ornamentation on the item itself.  I see this with clients who want to register the design on a t-shirt, a coffee mug or some other item where the design on the item is the very essence of the item.

USPTO Examining Attorney

In evaluating the registrability of a proposed mark, a USPTO examining attorney will consider the location, size, dominance and significance of the proposed mark as applied to an item, and will refer to the Trademark Manual of Examining Procedure for guidance.

If the proposed mark is so thoroughly integrated into the design on item as to be viewed as part of the item, registration will not be approved absent some evidence that consumers recognize the design as a trademark, or that the proposed mark had been used or registered by the applicant for other goods or services.

The Concept: Design Does Function as Trademark

To understand the concept, it is useful to consider an example where a design does function as a trademark. Deere & Company is an American manufacturer of a wide range of agricultural, construction and gardening equipment.  The Deere logo of a yellow leaping stag against a green shield graces every piece of equipment manufactured by Deere, and is a stark example of a design that is in no way integral to the overall design of the item on which it appears.

If you want to use a design as a trademark, display the trademark element of the design separately in a location traditional for trademarks; for example, in a hangtag or on a label or packaging.  For something like a t-shirt, use a small logo on a sleeve, at the hem, on the back or the breast of the shirt. Browse our site today to learn more about trademark law.

Barbara Burns: I provide my clients with advice and counsel on a broad range of subject matter, including entity formation and corporate governance; labor and employment; regulatory compliance and copyright and trademarks. I assist my clients in the negotiation and execution of transactional matters, including the acquisition and sale of businesses and business assets; financing arrangements; and hiring and firing of employees. In addition, I review, revise, negotiate and draft contractual agreements of all kinds. Providing my clients with information, counsel and transactional assistance in a timely and efficient manner, saves them time money and angst, and frees them to operate and grow their businesses.
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