Performing a Trademark Search for a Brand of Clothing

By Josh Gerben, Esq.

Today, we are going to look at how to run a trademark search for clothing. As a reminder, the US government breaks all products and services down into 45 different classes in which a trademark can be filed. These are called “international classes”, and we will take a closer look at those applicable to clothing items.

As a disclaimer, while we can point out some of the classes that are best to concentrate on when filing a clothing mark, the examination process itself remains highly subjective and searches may not always be conclusive.  All trademark applications are reviewed by an examining attorney from the USPTO, and, due to this highly individualized method, may reject the application for a subjective or unpredictable reason. While we evaluate the most relevant classes, just keep in mind that even if your trademark search clears those particular classes, it does not guarantee it will be approved by the USPTO examiner.

Classes for clothing marks

The first thing we are going to look at is the trademark ID manual to best understand which classes are most relevant to a clothing trademark.

The primary class for clothing is 25, as it covers a wide variety of articles of clothing with a wide range of specifications. Another class that it is critical to examine is class 35, which covers retail store services, both physical and virtual locations, and are also pertinent to the clothing sphere. If you have a trademark of a similar name that’s registered in class 35 for the name of a retailer of clothing, and you’re trying to register your mark in class 25, yours will still likely get rejected due to the potential overlap.

Another important pair of classes to look at, aside from the two main ones, are classes 14 and 18. Class 18 includes a wide variety of accessories such as bags, holdalls, pocketbooks, and purses. That’s also why we would want to check out class 14, which covers jewelry.  Finally, we should also consider class 9, which includes protective clothing such as work garments.

Performing a search for your clothing application

If you are performing the search yourself, even if you’ve entered in clothing and you’ve got all these classes here, it is not a dependable system. Let’s imagine you are attempting to register a mark that includes “BARN” for clothing.  Even if you scour the classes and do not find conflicting marks, they could still be out there. In this case, you may miss a registration for DRESS BARN in international class 42, which covers retail outlet services in the field of women’s apparel.

If we were attempting to register anything that included BARN as a clothing trademark, this DRESS BARN mark would be a problem and would most likely get us rejected.

So why didn’t we catch the DRESS BARN trademark? First of all, this doesn’t say clothing–it  says apparel.  Secondly, using class 42 for retail goods is now considered an outdated practice. Since this mark was registered in 1985, however, it was accurate at the time. This would likely be class 35 if they were to register it today.  Both of these points are a cause for caution when proceeding with a search; you’ve got to be on the lookout for alternative language and potentially outdated identification of classes.

Hiring an attorney to help with your search

This is another reason why we recommend using an attorney to perform a search and file the application. While it’s not rocket science to do a trademark name search, it is tedious. Being able to identify all of the potential issues in a trademark search comes with experience.

Gerben IP uses professional-grade search software. The search software allows us to do things like vowel replacements and phonetic searches to be extra thorough, much more so than you could be just using the freeform search on the USPTO website. The search results are accompanied by an extensive risk analysis that outlines the assessment of your trademark and its likelihood of achieving registration. If you are interested in proceeding with a trademark for your clothing items or retail store, please reach out today for a free consultation regarding next steps.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.