The adjudicator of Intellectual Property, Noach Shalev Shmulovich has ruled that Dov Charney’s brand “American Apparel” is a descriptive and thus not distinctive term, since it means clothing from America. Consequently, trademark application numbers 184606 and 184507 for the term in classes 25 and 35 respectively, were disallowed.
One could argue that through usage, the phrase American Apparel has aquired distinctiveness. Indeed, it could be argued that it is a well known mark. I think the mere act of capitalizing indicates that it is used as a brand, and the term apparel, though meaning clothes, is almost archaic and is not used in regular conversation in English or Americanese.
Applicant supplied evidence that a full 91% of adult females surveyed in Israel were unaware of the meaning. Using the Madrid Protocol (not yet possible in Israel), the mark was successfully registered in AU, CH, DE, EM, ES, FR, GB, IT, KR and SG. One assumes it is equally generic abroad as in Israel.
Rather than rejecting the mark, I’d have preferred a fair-use disclaimer, i.e. using the term as indicative of goods from the United States. That said, I can see a logic in the ruling however. Were someone to sell US manufactured goods in a shop titled American Apparel, it seems difficult to justify a claim of passing off.
Certainly the brand name is not ideal. Nevertheless, one wonders why American Apparel lacks distinctiveness, but Carglass is distinctive – see Israel Registrar of Trademarks Cancels Car Glass Marks on Grounds of Non-Use.
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Posted by Dr Michael Factor 
