[E-trademarks] Marks on Clothing

[Michael Eshaghian]

Thank you, everyone, for the on- and off-list responses. They were very helpful.

Michael Eshaghian
Attorney

Mesh IP Law, PC
5632 Van Nuys Blvd. #1395
Van Nuys, CA 91401
(213) 357-5668 call & text
michael at meshiplaw.com<mailto:michael at meshiplaw.com>
www.MeshIPLaw.com<http://www.meshiplaw.com/>

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From: Laura Geyer <lgeyer at ndgallilaw.com>
Sent: Monday, April 28, 2025 12:16 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Dale Quisenberry <dale at quisenberrylaw.com>; Michael Eshaghian <michael at meshiplaw.com>
Subject: RE: Marks on Clothing

Michael:

Dale makes a good suggestion, and I would also add (and I’m sure Dale meant this) that this kind of use needs to not be a one-off to please the office – have the client always put it on the label or other place where brands go rather than across the front where something is likely said to be ornamental.

The other question you are asking is whether you can register a mark where there’s a blank/swappable element that different words could go into. The answer is pretty much “no” now. These are called phantom marks. The TMEP section explains that a mark with a blank in it does not provide adequate notice of what the mark is.

John Welch wrote a nice blog entry about a precedential phantom mark refusal back in 2017. The office has not gotten more welcoming to them since this case, to my knowledge.

https://thettablog.blogspot.com/2017/05/precedential-no-12-return-of-phantom.html

Kindly,
Laura

Laura Talley Geyer | Of Counsel

ND Galli Law LLC
1200 G Street, N.W., Ste 800
Washington, DC 20005
Tel: (202) 599-9019 (direct)
https://ndgallilaw.com/laura-geyer/
https://ndgallilaw.com/

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Dale Quisenberry via E-trademarks
Sent: Monday, April 28, 2025 12:22 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Dale Quisenberry <dale at quisenberrylaw.com<mailto:dale at quisenberrylaw.com>>; Michael Eshaghian <michael at meshiplaw.com<mailto:michael at meshiplaw.com>>
Subject: Re: [E-trademarks] Marks on Clothing

EXTERNAL EMAIL
Michael,

One way to deal with the ornamentation issue is to place the mark on the shirt in an additional location, such as in the collar, or on a tag or label that is attached to the shirt, or on the packaging that the shirt is shipped in.

Dale

C. Dale Quisenberry
Quisenberry Law PLLC
13910 Champion Forest Drive, Suite 203
Houston, Texas 77069
(832) 680.5000 (office)
(832) 680.1000 (mobile)
(832) 680.5555 (facsimile)
www.quisenberrylaw.com<http://www.quisenberrylaw.com>

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> on behalf of Michael Eshaghian via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Date: Monday, 28 April 2025 at 10:58 am
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Michael Eshaghian <michael at meshiplaw.com<mailto:michael at meshiplaw.com>>
Subject: [E-trademarks] Marks on Clothing
Hi everyone,

A potential client is looking to register a brand name and a slogan. She wants to put the brand name on the backs of sweatshirts.

I’m vaguely aware of some issues re ornamentality when it comes to putting marks on clothing. Is there a case or other source that lays out the law that I can review?

She also wants to register a slogan in the form of THERE’S ALWAYS TIME FOR ___ (not the actual slogan). She wants to put different words in the blank and also put those on the sweatshirts. Can I submit an application with “___” and submit specimens with different words in the blank?

Thank you,

Michael Eshaghian
Attorney

Mesh IP Law, PC
5632 Van Nuys Blvd. #1395
Van Nuys, CA 91401
(213) 357-5668 call & text
michael at meshiplaw.com<mailto:michael at meshiplaw.com>
www.MeshIPLaw.com<http://www.meshiplaw.com/>

This e-mail may contain information that is privileged or confidential.  If you received this communication in error, please immediately notify the sender and delete/destroy all copies of this correspondence.

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