Protect fashion creations by intellectual property law – Trademark

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The fashion industry in the United States generates over $300 billion in revenue each year. In addition to its substantial contributions to the American economy, fashion is considered an art form

The Metropolitan Museum of Art in New York organizes many exhibitions featuring fashion designs. Among the most notable are those that pay homage to Coco Chanel, whose iconic designs revolutionized the way women wear clothes, including accelerating the popularity of trousers in the 1920s; Alexander McQueen, whose designs are credited with bringing a sense of whimsy and rebellion to fashion; and Charles James, who used sculptural, scientific and mathematical approaches to construct iconic ballgowns, and whose innovative tailoring continues to influence designers today.

Despite fashion’s economic and artistic contributions, very limited legal protections for fashion design are currently available in the United States. Although the fashion industry is changing rapidly, thanks to modern technology, images of the latest designs quickly spread online and into the hands of imitators, who immediately start producing imitations and counterfeits. This makes it increasingly difficult for designers to achieve a sustainable financial return on their creative investments.

The fashion industry has lobbied Congress to modernize US legislation and allow for better protection of designs. This would bring the United States on par with other countries, such as France, Italy and the United Kingdom, where fashion designs themselves are copyrightable. Currently, in the United States, only elements of a design are copyrightable.

Three intellectual property theories are available to protect fashion designs: trade dress, copyright, and design patents. As noted below, each has unique requirements, benefits, and challenges.

trade dress

Trade dress is part of trademark law, which is primarily governed by Lanham law. Trademark law provides federal and common law protection for a word, symbol, or phrase used by producers to identify their products, so long as it serves as a source identifier. Fashion designers have been able to use trademark law to protect their brand names and logos by registering them with the US Patent and Trademark Office; however, this is often not enough.

In recent years, trademark law has expanded to protect other aspects of a product, such as its color, packaging or design, under trade dress. Specifically, trade dress protects the visual characteristics of a product as long as those characteristics signify the source of the product to consumers and are not functional.

In 2000, the United States Supreme Court issued its opinion in
Wal-Mart Stores vs. Samara Brothers, 529 US 205 (2000), where trade dress was divided into two categories: protection of product packaging and protection of product design. Samara Brothers filed an infringement action against Wal-Mart for copying its children’s clothing design. Samara Brothers attempted to assert trade dress protection in unregistered designs. However, the court ruled in favor of Wal-Mart, finding that where Samara Brothers’ alleged trade dress was in the product itself, and not in the product packaging, it should show secondary meaning.

Product packaging refers to the “dressing” of a product, which is recognized by consumers as identifying the source of the product. The court clarified that the packaging of a product can be protected if it is inherently distinctive or if it has acquired a secondary meaning. In contrast, product design, which is the actual product or a physical item of the product, can never be inherently distinctive, and demonstration of secondary meaning is required. Essentially, in order to protect a product design, or in this case a fashion design, the trademark owner must prove that consumers associate the design with the trademark.

A demonstration of secondary meaning can be very difficult to pull off in the fashion industry, where fashion trends change in the blink of an eye. However, some creators have been able to use the trade dress law to protect their creations. For example, the famous French shoe designer Christian Louboutin, known for his famous red-soled shoes, prevailed in 2012, in Christian Louboutin versus Yves Saint Laurent, 696 F.3d 206 (2012). The United States Court of Appeals for the Second Circuit reversed a lower district court ruling and ruled that Louboutin’s signature red shoe sole was a ‘distinguishing symbol’ that had come to represent the brand and deserved trademark protection. The court relied on Qualitex v. Jacobson Products514 US 159 (1995), which considered that a single color can alone serve as a mark, as long as this color has acquired a secondary meaning and identifies the mark.

Businesses seeking trade dress protection for their fashion designs should consider how they will market their designs to create an association between the designs and the business, to show secondary meaning.


Currently, fashion designs are not copyrightable under US copyright law. However, even though the designs themselves are not protectable because they are considered functional elements, certain aspects are protectable, such as original prints, patterns, unique color arrangements and new combinations of elements. used in a drawing.

Protection for these certain aspects of a design can only be obtained “if, and only insofar as, that design incorporates pictorial, graphic or sculptural features which can be identified separately from the utilitarian aspects and are capable of existing independently of these of the article”, according to the law.

The separability test can be satisfied by demonstrating physical or conceptual separability, where a clear line must be drawn between “works of applied art protected by copyright and works of industrial design not protected by copyright”. author”. Therefore, copyright law will protect the design of the garment, but not the garment.

The fashion industry has lobbied Congress for new legislation that would allow extended protection to clothing designs. The industry has highlighted how copyright law across Europe allows for such protection, while the US lags behind, only offering protection for certain elements of a garment design. .

Over the past decade, several bills have been proposed that would have increased copyright protection for fashion designs. The latest, the Innovative Design Protection Act of 2012, was introduced on December 12, 2012, but never passed. It would have amended Chapter 13 of Title 17 of the Copyright Act, and the most significant change would have been to allow fashion designs to be protected for up to three years. This would allow a designer to sue for infringement anyone who copies or makes a substantially similar copy of the copyrighted fashion design.

Copyright law aims to promote the development of creative industries. Proponents of the legislative amendment to the Copyright Act believe the fashion industry is entitled to the same protections given to the music, film and book publishing industries.

Design Patents

Two types of patents are available under US patent law: utility patents and design patents. Designers can obtain protection for their fashion designs by filing a design patent application.

Design patents protect the appearance of a design or ornamentation, so long as it is novel, non-functional, and non-obvious to a designer of ordinary skill in the art. When filing for a design patent, the designer must claim certain features of the design that must be protected; therefore, the patent is for the basic design concept, not the exact product sold by the designer.

Typically, design patents are granted for handbags, shoes, jewelry designs and more. Clothing designs are generally considered unpatentable because they are considered functional. More so, clothing designs are seen as obvious and not new. Although some elements of a design are not new or obvious, their combination in this design may be. Therefore, a designer can patent key elements and important parts of the garment design.

Design patents can be useful because they give designers the right to prevent others from making similar or substantially similar products. Also, more importantly, a designer is not limited to obtaining only one design patent per product. Each element of a design can be covered by a separate patent, which extends the protection of the design.

Options exist

Although no clear law protects fashion designs in their entirety, given the variety of protection options available, a designer can use trademark, copyright and patent law to obtain protection for different aspects of his creations. While the fashion industry will likely continue to push for greater protection, it can be comforting for designers to know that options exist when it comes to protecting innovation and creativity in their work.

Christiane Schuman Campbell is a partner in Duane Morris’ Intellectual Property practice group. She has extensive experience in the maintenance and enforcement of trademarks, including application on the Internet. Her trademark litigation experience also includes cases before the Trademark Trial and Appeal Board and working with attorneys outside the United States on trademark opposition and rescission actions. ‘foreign.

Previously published in The Legal Intelligencer

Warning: This alert has been prepared and posted for informational purposes only and is not offered and should not be construed as legal advice. For more information, please see the full disclaimer.

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