INTERNATIONAL CLASS 25

(Clothing)

GENERAL SCOPE OF CLASS 25: Clothing, footwear, headgear.

1. SEARCHING:

Searching by coordinated class –

025[cc] – 014, 018, 024, 035, 042, A, B, 200

2. INDENTIFICATION ISSUES

Some general wording is allowed in Class 25. The following wording is acceptable:

· After ski boots

· Bandanas

· Beachwear

· Body shapers

· Bottoms

· Caps

· Cloth diapers

· Coats

· Creepers

· Dresses

· Footwear

· Frocks

· Gloves

· Infantwear

· Leather jackets

· Loungewear

· Neckwear

· Plus fours

· Rainwear

· Shirts

· Ski boot bags

· Ski wear

· Tennis wear

· Tops

· Undergarments

· Zori

Indefinite and unacceptable wording includes the following:

· Activewear

· Bibs (the applicant must specify the type of bib, e.g. plastic or cloth babys bib or ski bibs are in Class 25; paper bibs are in Class 16)

· Children’s wear

· Dance wear

· Evening wear

· Headgear (the applicant may amend to “headwear”)

· Knitwear

· Layette

· Outerwear

· Sportswear

More on Terminology in ID’s:

· Handkerchiefs are in Class 24

· Disposable diapers are in Class 16; cloth diapers are in Class 25

· Golf gloves are in Class 28; golf shoes are in Class 25

· Helmets are in Class 9

· Surgical gowns and surgical scrub suits are in Class 10

· Medical examination gowns are in Class 10

· Protective clothing is in Class 9

· Protective gloves for industrial use are in Class 9

· Wet suits are in Class 25

· Ski boots are in Class 25

3. REGISTERED TRADEMARKS:

· WINDBREAKER – U. S. Registration No. 0941015

· ONESIES - U. S. Registration No. 1292981

· DACRON – U. S. Registration Nos. 0555085 and 0554811

· GORE-TEX - U. S. Registration Nos. 0945828; 1600992; 1621319 and others

· KEVLAR – U. S. Registration Nos. 0984031; 1920932; 2032497

· HENLEY – U. S. Registration No. 1344562

· LYCRA - U.S. Registration Nos. 0673321; 0673601; 2114474; and 2184938

· PEDS - U.S. Registration Nos. 2179123; 1886155; and 0934511

4. DESCRIPTIVE WORDING:

· Activewear

· Britches

· Collection

· Creations

· Designs

· Duds

· Fashion

· Gear (is generic for clothing. See Gear Inc. v. LA Gear CA., Inc., 4 USPQ2d 1192 (TTAB 1987).

· International

· Junior or Juniors

· Line

· Lite or Lites for shoes

· Light or Lights for shoes

· Outfitter or Outfitters

· Plus (descriptive of large size clothing)

· Rags

· Sport

· Streetwear

· Threads

· Wear

Promotional T-shirts: terms which are descriptive when used in connection with services are not disclaimed when used on t-shirts promoting the services.

SUBSTANTIVE ISSUES

5. SURNAME RELATED ISSUES:

For the purposes of making a surname refusal, the terms “collection,” “fashion,” “line,” “lines,” “sport,” and “sports,” are usually considered so highly descriptive that combining them with a surname does not change the surname significance of the mark.

6. POSSIBLE DECEPTIVE WORDING RELATING TO MATERIAL CONTENT:

· Cotton

· Silk

· Wool – and wool related terms, e.g. cashmere, vicuna, guanaco, angora, mohair, pashmina, shahtoosh, camel, merino, lamb

· Leather

· Denim

· Down

· Hide or Hyde

· Goose

· Hemp

· Micro Dernier

· Micro-fiber

If a mark contains any of the above wording, then the identification of goods must be amended to indicate that the goods are made wholly or substantially in part of the material named. An acceptable identification would be: leather jackets, shirts and dresses made in whole or substantially in part of cotton. If the term is a separable element of the mark, then the word must be disclaimed. If the goods are not made at least in part of the material named in the mark, then registration must be refused under Section 2(a) of the Trademark Act [see form paragraph Q22-2] and 2(e)(1) as deceptively misdescriptive [see form paragraphs Q31 and Q31-1 to 3]. This applies equally to foreign words which identify the material named. See also In re Shapely, Inc., 231 USPQ 72 (TTAB 1986); In re Budge Manufacturing Co. Inc., 8 USPQ2d 1259 (Fed. Cir. 1988). Variations on these words [e.g. SILKY, WOOLY] may not require an amendment to the identification of goods, but should be disclaimed.

7. POSSIBLE DECEPTIVE WORDING RELATING TO GEOGRAPHIC LOCATIONS:

· London

· New York

· Paris

· Milan

· Rome

· Italy

· France

· Tasmania for goods containing wool

If a mark contains the name of a well-known fashion center and there is no connection between applicant’s goods and the place so named, then registration should be refused under Section 2(a) of the Trademark Act on the basis that the mark is deceptive. [See form paragraphs Q22 and Q22-1] In addition, refusal of registration should be made under Section 2(e)(3) as geographically deceptively misdescriptive. [See form paragraphs Q32-5-1 et seq]

AMERICAN has been held deceptive for certain types of clothing not made in the United States. In re Biesseci S.p.A., 12 USPQ2d 1149 (TTAB 1989)(AMERICAN SYSTEM deceptive for clothing made in Italy.)

NEW YORK has also been held deceptive for clothing not from New York. In re Perry Manufacturing, 12 USPQ2d 1751 (TTAB 1989); In re Hiromichi Wada, 48 USPQ2d 1689 (TTAB 1998)(NEW YORK WAYS GALLERY held primarily geographically deceptively misdescriptive when used in connection with backpacks, dufflebags, etc., offered by a Michigan applicant).

LONDON LONDON held deceptive of clothing not from London. In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992).

8. COMPONENT MARKS:

If the specimens of use show that the mark is used to identify a component of the goods rather than the goods, then the identification of goods should be restricted.

Example: The mark is INSUL-CAM and the identification in the application is “jackets.” The hang-tag specimens read “Now with INSUL-CAM fabric.” The identification of goods should be amended to read: fabric sold as a component part of jackets, in Class 25.

However, if the specimens indicate that the applicant is offering just the fabric, then the proper identification would be “fabric used in the manufacture of jackets, in Class 24.”

9. ORNAMENTATION:

Designs on jean pockets and on athletic shoes are usually considered ornamentation. In re Dassler, 134 USPQ 265 (TTAB 1982). Designs or wording across the front of a garment is usually considered ornamentation as well. These marks should be refused as not functioning as a mark under Sections 1, 2 and 45 of the Trademark Act. [See TMEP sections 1202.04 et seq; and form paragraphs Q9 and Q9-1 to 3.] Applicant may cure ornamentation several ways: by demonstrating secondary source [e.g. collateral use of the mark] which the Office will construe liberally; by seeking registration under Section 2(f); by amending to the Supplemental Register; by submitting acceptable substitute specimens. Shoe designs and jean pocket designs will require extensive evidence of distinctiveness, not merely long use, to prove Section 2(f).

10. SPECIMENS:

Hang tags, labels, or photos of the goods showing the mark on the goods are all acceptable specimens. Advertisements, business cards, order forms are unacceptable.

Bags showing the mark as the name of the store are unacceptable for the goods sold in that store, In re Pennsylvania Fashion Factory, 200 USPQ 141 (CCPA 1978).

Folders, brochures and catalogs which only describe the goods and their characteristics or serve as advertising or promotional materials are not acceptable specimens to show proper trademark usage. However, if the applicant submits evidence that such material functions as a “point of purchase display” it may qualify as proper specimen use. See In re Ancha Electronic Inc., 1 USPQ2d 1318 (TTAB 1986). To qualify as a “point of purchase display” a catalog or similar material must clearly show:

1. a picture of the relevant goods; AND

2. the mark sufficiently near the picture of the goods, so that a clear association is formed between the mark and the goods; AND

3. information necessary to order the goods, i.e., an order form, address to such form, etc. Lands’ End Inc. v. Manbeck, 779 F Supp. 311, 24 USPQ2d 1314 (E.D. VA. 1992).

11. FALSE CONNECTION:

If the mark contains matter that falsely suggests a connection with an individual living or dead, it should be refused under Section 2(a). Buffet v. Chi-Chi’s Inc., 226 USPQ 428 (TTAB 1985).

12. CONFIGURATION OF GOODS:

This issue is most commonly seen with shoe designs.

If the applicant is seeking to register a configuration of the goods, then refusal should be made under Sections 1, 2 and 45 of the Trademark Act. See form paragraphs Q19-22 through Q19-33 and TMEP Section 1202.02(b)(i).

If the applicant is seeking to register an element that is functional [e.g. a design feature which serves a utilitarian purpose], then the appropriate refusal should be made under Sections 2(e)(5) of the Trademark Act. See form paragraphs Q 19 through Q19-21 and TMEP Section 1202.02(a) et seq.