Protecting Fashion Trademarks with Existing Legislation

The lack of specific legislation directed to protection of garment fashion designs has been a sore point with fashion designers, who feel they are being unfairly treated compared to innovators in other fields, such as electronic, information technology and mechanical inventions, which do enjoy such protections.

Proponents of fashion protection have repeatedly pushed for such legislation. In fact, over the past century, there have been 75 bills introduced in Congress, an average of a bill every 18 months, directed at providing copyright protection to fashion designs. However, none of these bills have succeeded due to the sharp differences between proponents and opponents of such legislation.

This article offers practical advice to lawyers and legal practitioners on fashioning a strategy tailored to protecting their clients’ garment fashion designs through a combination of U.S. intellectual property laws, international fashion-specific protection laws.

Taking Advantage of Available International Protections

U.S. fashion designers can get the most benefit from the advantages provided by European fashion protection laws by first introducing their designs in Europe. Other benefits are available to fashion designs introduced first in the United States as long as European rights are pursued and perfected in a timely manner.

Fashion designs have long enjoyed special status in Europe, which, historically, has placed special emphasis on developing and instituting policies and practices aimed at becoming the fashion leader and trendsetter in the world. In that effort, European countries long ago began implementing legislation to specifically protect garment fashion designs.

Today, the European Union laws offer broad protection for “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, shape, texture and/or materials of the product itself and/or its ornamentation.”

European law generally offers two categories of protection for fashion design: a registered right and a non-registered right.

A registered right invests the owner with monopoly protection for the design for up to 25 years and precludes others from using the same or similar designs. The 25 years of exclusivity comes in renewable five-year intervals. Registered Community designs are enforceable against the same or similar designs without requiring proof of intent of the infringer.

Unregistered rights are available for up to three years, but do not offer monopoly protection. Rather, an infringement lawsuit based on unregistered design rights requires proof of willfulness and actual copying of the design. The three-year protection period is measured from the date the design was first made available to the public within the territory of the European Union.

U.S. designers seeking to take advantage of unregistered design protections must pay attention to the nature of the disclosure required to trigger the protection. Under the law, the disclosure is one that makes the design available to the public in such a way that “the interested circles operating within the European Union (EU) can reasonably be aware of the design.”

Therefore, the date, place and the nature of the disclosure are essential in that they create the unregistered Community design right. An owner of a Community design right then has 12 months to register its rights. For the disclosure to be effective, it must occur for the first time within the EU territory.

Fashion Design Protection Available in the United States

Although the United States has not yet enacted specific legislation for protection of fashion designs, U.S. laws do offer powerful tools for protection of certain aspects of such designs, including patent, copyright and trademark laws.

Utility patents can protect novel and non-obvious aspects of fashion designs. For example, U.S. Patent No. 6,817,034, titled “Maternity Undergarment,” describes an inventive “undergarment that acts as a body smoother to create smooth lines at the thigh, buttocks, back and waist, creating a better fit and supporting the look and feel of more fashionable maternity clothes.”

According to the patent, the invention “affords the highest of comfort while giving the wearer shape and definition under her fashionable clothes without unsightly panty or bra lines.”

U.S. Patent No. 5,890,231, titled “Clothes Suitable for Sporting Wear,” describes “fashionable clothes suitable for sporting wear.” The invention described short-sleeved polo shirts and T-shirts, and shorts, breeches and slacks, with asymmetrical sides to allow the user’s limbs more freedom of movement.

Design patents are widely used to protect aesthetic and non-functional aspects of apparel designs. For example, Christian Dior was issued U.S. Design Patent No. D708, 424 for its coat design.

A utility patent filed in the United States can be effective in other countries if the patent owner files a corresponding application in the countries in which it seeks protection within a year of the U.S. filing. For design patents, the corresponding international filing window is six months. At the end of the filing window, the patent owner can obtain protection for its designs in target countries.

U.S. copyright laws protect original works of authorship that are fixed in a tangible medium of expression. Although current U.S. copyright law does not extend protection to “useful articles,” such protection is available as long as the artistic design can be identified separately from, and is capable of existing independently of, the utilitarian aspects of the item.

Accordingly, copyright law has been used to protect certain aspects of fashion designs, such as colors and color combinations, prints, patterns and artistic impressions.

Trademark protection generally covers any feature or characteristic—such as a name, logo, color or color combination, sound, or decorative and aesthetic feature—that (1) identifies a product or service to the consuming public, and (2) helps differentiate the product or services from same or similar items offered by competitors.

The aim of trademark law is to prevent consumer confusion as to the source of the product or process identified by a mark. Trademark law, in its various forms, including trade name, logo and trade dress, is widely used to protect designs and aspects of designs.

In fashion design, a trade name or a logo acts to promote and protect a fashion brand. Trademark law can also protect distinctive aspects of fashion design elements, including patterns, color combinations and prints, which are capable of acting as source identifiers. A well-known example is the red-colored sole featured on Christian Louboutin’s footwear.

Trade dress protection is a type of trademark protection that covers the overall appearance of the product or its packaging. For example, the overall design of Converse’s Chuck Taylor shoe is protected by trade dress law. Apparel designs seeking to benefit from trade dress protection must first have achieved a certain level of recognition in the minds of the consuming public, known as “secondary meaning.”

In that regard, design patents can help accomplish the requisite recognition by providing a period of exclusivity for the design during which consumers will come to associate the mark with its source.

Post-Protection Challenges Facing Fashion Designers

It is no secret that today, intellectual property is most often a company’s most valuable asset. Thus, protection of intellectual property is a significant challenge after the designers have obtained protection for their designs. Intellectual property protection thus must be treated as asset protection, which requires focus and planning tailored to the company’s resources and goals.

A key element of a successful protection program is policing the market to deter infringement. Failure to monitor infringing activity in the marketplace can result in weakened, or even loss of, intellectual property rights.

A special challenge faced by fashion designers with respect to policing the market in the fashion industry is the ease with which the designs can be copied and reproduced. Another challenge is the short life span of the designs, which rarely exceeds a year. These limitations require fashion designers to devote considerable resources to identifying and discouraging copycats.