Trademark Protection for the Fashion Industry

Originally published in The Connector magazine in July 2017.

If you are a member of the fashion industry, protecting your intellectual property can be the difference between success and failure. It is vitally important to understand the different types of available intellectual property protection and what each can effectively protect.

Trademarks can take many forms but are indicators to consumers that a certain product originates from a specific source. Brand names and slogans are typical trademarks, but sounds, smells, and even colors can function as trademarks. Trademark rights are established in the U.S. by using the mark.

It is very important to conduct a trademark search before starting to use a trademark to determine if there is someone already in the market using a similar mark that may assert their rights against you. Depending on the importance of the mark, there are various levels of searches that can be performed. For example, if the mark is for the essential brand name, then it is worthwhile investment to run a comprehensive search through a search agency that covers all federal trademark registrations, state law registrations, common law uses, business names, social media accounts, domain names and websites.

Trademark owners can register their mark with the United States Patent and Trademark Office (USPTO), and federal trademark protection can extend as long as the mark remains in use in relation to the products for which it is registered. Once you have a trademark registration, it is important to monitor the marketplace to ensure that no one else starts using a similar mark that would infringe on your rights.

In the fashion industry, designers frequently rely on their own name as their brand name, a la Calvin Klein, Donna Karan, etc. But in trademark law, a personal name can only be protected as a trademark if the public has come to see that person’s name as the source of the fashion products on which it is branded. This level of recognition does not happen quickly, typically only after extensive advertising and promotion as a brand name. Importantly, a designer just starting out in the industry must also take care to understand who owns the rights to their name as a brand, because an employer trying to drum up the designer’s name into a brand will frequently try to protect its investment by having the designer sign over some of the rights in his/her own name!

Copyright law is commonly used to protect creative artistic output, such as photographs, music, and movies. However, it can also be used to protect fabric designs, jewelry, and portions of fashion pieces that are creative yet can be separated conceptually from their functional elements (e.g., the ornateness of a belt buckle). In order to obtain a copyright registration, the creation must possess a certain modicum of creativity. Copyright registrations are inexpensive to obtain, and last for an extremely long period of time. The registrations give their holder the ability to sue for infringement in federal courts and to obtain heightened “statutory” damages (regardless of the size of the infringer’s profits) and attorneys’ fees, among other benefits. It is very important to register a copyright as early as possible, as in most cases statutory damages and attorneys’ fees are available as remedies if the creator discovers an infringement before registering a copyright in their creation.

There are two types of relevant patents—utility patents (which protect functional inventions and methods) and design patents (which protect ornamental design of a product).

A particular product might have both functional elements protectable by utility patent and ornamental aspects protectable by design patent. Design patents can also protect the product’s configuration, shape, and/or surface ornamentation. Design patents are limited to the appearance of the product and do not cover structural or functional features or innovations. A design patent in the United States has a term of 15 years from Patent Office issuance.

Similar to a utility patent application, a design patent application undergoes review and examination by the U.S. Patent and Trademark Office (USPTO). In order for a design patent application to issue as a design patent, the USPTO must find that the design is novel (new) and non-obvious when compared to similar prior existing product designs.

Because design patents are commonly used in the fashion industry, we will focus on them. The scope of protection for a design patent is defined by the figures in the design application. Therefore it is extremely important that the drawings of the product for which design protection is being sought be prepared in accordance with Patent Office guidelines. This typically requires retaining a draftsperson familiar with these guidelines, and who routinely prepares drawings for design patent applications.

Design patent protection is available for various types of products. Product examples of products include: eyewear, footwear, totes and handbags, furniture, product packaging, lighting, and even screen shots from electronic displays.

From a practical standpoint, design patents can be a much faster way to obtain patent protection. Examination in the United States typically takes place within a year, in contrast to the two to three years (or more) of waiting for a first action in a utility patent application.

Importantly, design patents provide the same marketing advantages as utility applications. Once a design application is on file, the product can be labeled as “patent pending’ once a design patent has issued, the marking can be changed to “patented.”

Design considerations are playing an ever increasing role in the marketplace. Design patents can play an important role in protecting design innovations and help reduce competition, whether they are the only available intellectual property protection or are part of an overall legal strategy.