"But Why Can't I Trademark My T-Shirt Slogan?"

Deion Sanders' rise in popularity as the University of Colorado's head football coach has been spectacular to watch, and his viral soundbites in press conferences and interviews have sparked interest across the nation. This past week, Sanders applied to register his latest collection of catchphrases with the USPTO ("PRIME EFFECT," IT'S PERSONAL," "DADDY BUCK," and others) in connection with clothing and apparel goods. However, the United States Patent and Trademark Office (USPTO) is likely to push back against registering these marks in connection with clothing items, as the USPTO will likely to view these trademarks used on clothing goods as promotional in nature and not an actual trademark use in commerce.

The USPTO plays a crucial role in protecting intellectual property rights, including trademarks. Trademarks are essential for businesses to safeguard their brand identity, but there are certain restrictions when it comes to obtaining registered trademark protection for promotional items (for example, t-shirts, mugs, stickers, key chains, towels, etc.). The legal protection of trademarks on promotional products and merchandise has been quite controversial and has created a lot of questions relating to the issues of ornamental use and proper indication of source of goods and services.

When applying to register a trademark with the USPTO, the trademark owner must submit a description of goods and services it plans to provide under the mark. When applying to register a trademark for clothing and apparel, the USPTO typically distinguishes between being in the business of manufacturing or selling apparel (for example, Nike) versus simply selling promotional products that tout a company's primary goods and services (for example, Delta airlines, an airline provider, selling t-shirts that bear the mark "DELTA" across the chest). It's not uncommon for the USPTO to refuse to register a trademark for the latter citing ornamental use and improper indication of source.

An ornamental refusal is when the USPTO refuses registration of a trademark. Such refusal is because the sample of how you actually use the applied-for mark (the "specimen") or other information in the record shows use of the mark merely as an ornamental or decorative feature on the goods and not as a trademark to indicate the source of the goods. For example, a slogan prominently displayed on the front of a t-shirt may be considered merely ornamental use and not trademark use. That is, most purchasers of the t-shirts would not automatically think the slogan identifies the source of the goods but would view the slogan only as a decoration on the goods.

Moreover, promotional goods that bear trademarks rarely identify the immediate source of the good (for example, the manufacturer). Promotional products are usually manufactured by a separate company (not the trademark owner) to tout the trademark owner. When a trademark is placed on a promotional product, like a t-shirt, there can be confusion as to who serves as the source of the goods and services (the trademark owner or the manufacturer). For this reason, when applying to register a trademark in connection with clothing and apparel, the USPTO prefers to see specimens showing the mark used on hem tags or hangtags to indicate source of the goods and services, and not the trademark depicted on the clothing item itself.

In summary, while promotional items are popular for marketing and brand promotion, they do not typically qualify for trademark protection due to their ornamental nature. It will be interesting to see how the USPTO treats Deion Sanders' new trademark filings as these phrases will likely be used as ornamental slogans on t-shirts and other apparel items, and not eligible for registered trademark protection.