Legal Question in Intellectual Property in New York

Re: Trademark Common Words on T-Shirts?

You can secure trademark rights in a common word used on a t-shirt as long as that word is something other than "t-shirt" or a similar term that means or connotes shirts or clothing. In other words, the term cannot be a generic word for the item on which it appears. In addition, the term cannot be confusingly similar to a trademark aleady in use by another to identify the same or similar goods (i.e. t-shirts or other wearing apparel). Therefore, you will likely have a problem securing trademark rights in the term "happy" for t-shirts if another clothing maker is already using "happyear" because the two terms are similar enough to confuse consumers as to the origin of the goods on which they appear. Assuming you have put a term on your t-shirts that is not generic for t-shirts or clothing and is not confusingly similar to a term already in use for clothing, you have certain common law trademark rights as soon as you start selling the shirts in commerce. However if you are serious about protecting the term as a brand, you should take steps to secure a federal trademark registration, which would give you greater, nationwide rights in the term. This is something my office can assist you with. You may also apply for the trademark registration on your own by visiting www.uspto.gov and clicking the link for Trademarks. However, it is usually helpful to have an attorney who is experienced in dealing with the tradmemark examiners at the Patent and Trademark Office.

If you are successful in securing trademark rights in a term you use on t-shirts, you would, at least theoretically, be able to stop and/or obtain money damages from others who use the same or a confusingly similar term (regardless of font or style) to identify t-shirts or similar apparel items.