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Free Advice Fridays: what does a trademark registration do?


A Hypothetical Question from A Hypothetical Client:

I’m confused. What’s the difference between trademarking and copyrighting? I have a line of t-shirts, but I don’t know whether to apply for a trademark or register a copyright to protect them. If we apply for a trademark, will that protect all the designs on the t-shirts against knock-offs?

- Hypothetical Client

This seems like a relatively simple question but it is really packed.

There are three broad issues here:
1.    what does a trademark registration do?
2.    what does a copyright registration do?
3.    how do knock-offs and counterfeit goods figure into this?

Let’s hit the first one today and save the rest for later.

So, yeah, what does a trademark registration do, anyway? Why bother?

A trademark registration is intended to protect your brand. A brand/trademark is used to leverage a company’s goodwill in the marketplace and to indicate to the purchasing public the source of the goods (or services) marketed under a specific trademark.

OK, but really, what does all that mean?

For example, if I like Haagen Dazs ice cream (which I do), what does that mean? It means that I am partial to the ice creams that are sold under the Haagen Dazs trademark, because I have always found them to be delicious and of high quality.

I am more likely to purchase a pint of chocolate-chocolate chip Haagen Dazs than I would be to buy a store brand or generic version of chocolate-chocolate chip ice cream, because I know for sure (based on my past experience with Haagen Dazs) that the Haagen Dazs version is going to be delicious. Meanwhile, I might be skeptical of the quality of a generic ice cream because there is no brand/trademark reputation standing behind it.

My inclination to purchase a pint of Haagen Dazs because Haagen Dazs has been consistently delicious is called “goodwill”. Goodwill is related to a company’s reputation, except that goodwill has a financial value to it in some valuations.

In the case of Hypothetical Client, HC creates a line of t-shirts that have unique designs on them. The t-shirts are made of organic cotton of a high-quality density. HC decides to use “HCTM” as the trademark for the t-shirts. HC creates labels that use the HCTM trademark and hang-tags with HCTM on them.

HC spends a fair amount of dollars on marketing, hires a showroom, creates a webstore, and attends apparel tradeshows, all in an effort to sell HC’s goods under the trademark HCTM. As part of building the brand’s identity, HC advertises that it donates a portion of its profits to Green Corps, a non-profit that supports environmental protection and public health initiatives.

Consumer finds one of HC’s t-shirts sold under the trademark HCTM, likes it, and buys it. Consumer likes the quality of the t-shirt and she gets a warm fuzzy feeling at the thought of not only getting this great t-shirt (which looks smashing on her) but also indirectly contributing to Green Corps. HCTM has all the qualities Consumer is looking for in a t-shirt and Consumer gives HCTM two thumbs-up. Goodwill all the way, baby!

Over the next few years, Consumer sees HCTM t-shirts being sold at different stores and buys them for herself and as gifts for her friends.

Because the quality of an HCTM t-shirt has always been good, Consumer is more likely to buy HCTM t-shirts again – somewhat regardless of the actual design on the t-shirts – because Consumer doesn’t have to guess about the quality of HCTM t-shirts. The value of the trademark “HCTM” is partially related to the likelihood that Consumer will purchase HCTM t-shirts again and again.

Lo and behold, a new company (Baddy&Co) starts marketing t-shirts under the trademark HTCM. Baddy&Co’s HTCM t-shirts are made of a cotton-poly blend and the owner of the company has founded an organization that has the sole purpose of denying global warming.

By selling Baddy&Co t-shirts under the mark HTCM, Baddy&Co traded on the goodwill of HC’s company to get sales for themselves and potentially to take sales away from HC.

Let’s visit Consumer again: Consumer needs to buy a present for her brother, goes shopping, and sees the HTCM t-shirt. Mistaking the trademark HTCM for the trademark HCTM and believing the t-shirt to be manufactured by HC, Consumer buys the t-shirt for her brother. Consumer’s brother, who has sensitive skin, gets a bad rash from the t-shirt and he stops talking to his sister, Consumer, for a week.

Because the marks HCTM and HTCM are confusingly similar and are used on similar goods, it has led to confusion in the marketplace about the actual source of the t-shirt. Consumer mistakenly purchased HTCM’s poor-quality t-shirt for her brother and they had a collectively bad experience.

This harms HC and its HCTM trademark in two ways:
1. It results in a lost sale because Consumer purchased the HTCM shirt instead of the HCTM shirt, and
2. Consumer and her brother had a bad experience with a t-shirt they thought was made by HC’s company, and Consumer and her brother (and probably their friends) will be reluctant to purchase another t-shirt marketed under the trademark HCTM.

OK, so what does this have to do with trademark registration?

When HC registers its trademark, HC “puts the world on notice” that HC is using the mark “HCTM” in commerce in connection with t-shirts.

This “putting the world on note” of the use of the trademark would:
1. dissuade a prudent business from using the mark HTCM in connection with apparel; and
2. give HC greater rights to prevent Baddy&Co from marketing goods under the mark HTCM; and
3. if the infringement was intentional/willful on Baddy&Co’s part, HC would be able to receive minimum statutory damages (an amount of money set by statute to dissuade people from infringing on other people’s marks).

None of this has anything to do with the designs on the front of the t-shirts. Those are covered by copyright registration, which we’ll cover later.

Make sense?

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Disclaimer: These articles are for information only and do not constitute advice particular to your individual legal situation. Nothing on this site creates an attorney-client relationship between you and Heraty Law PLLC. The information on this site is general only, and you should not act upon this information without consulting with an attorney. If you send any confidential information to us and you are not an established client of ours, we may not be obliged to keep the information confidential.



posted on Friday, May 29th, 2009 at 4:59 pm and is filed under 2009, 2009-may, Heraty, Heraty Law, Hypothetical Client, apparel, faf, free advice fridays, hypotheticals, may-2009, trademark. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.

2 Responses to “Free Advice Fridays: what does a trademark registration do?”

  1. Fashion News contributes:
    May 30th, 2009 at 8:43 am

    Fashion News

    [...] HC spends a fair amount of dollars on marketing, hires a showroom, creates a webstore, and attends apparel tradeshows, all in an effort to sell HC’s goods under the trademark HCTM. As part of building the brand’s identity, HC advertises … [...]

  2. Heraty Law - news - tv/film, music, fashion, and business law contributes:
    June 12th, 2009 at 12:59 pm

    [...] Last week, we gave you this hypothetical question from Hypothetical Client: [...]

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