Intellectual Property Tools to Protect Fashion Items | Fox Rothschild LLP

[author: Nadine Banuelos]

Just as every piece of art is unique, there is no “one size fits all” when it comes to protecting your fashion items with IP tools. Below are three possible situations in which you can use IP tools with respect to the nature, originality, consumer-oriented features and growth potential of a product.

Scenario 1: Protect the work by copyright.

The next time you want to protect the design of a t-shirt, the design of a design on fabric, or a jewelry design, you need to consider whether your work can be under copyright. Copyright protects “original works of the author” fixed in any tangible medium of expression, such as “pictorial, graphic and sculptural works”.[1] The best part about a copyright is that registering it is usually inexpensive and simple.

The duration of a copyright for a particular work may depend on certain factors such as whether it was published and, if applicable, when it was first published.[2] The general rule for works created after January 1, 1978 is that copyright protection lasts for the lifetime of the author plus an additional 70 years.[3] For a work produced for remuneration, an anonymous work or a pseudonymous work, the duration is 95 years from the date of publication or 120 years from the date of creation, whichever comes first.[4]

In case of infringement, a designer must prove that the infringer copied the designer’s copyrighted work.[5] Direct proof of copying can be difficult; however, a designer can establish the copy item by providing evidence that (1) the infringer “had access” to the designer’s work and (2) the two works are “substantially similar”.[6] If a designer is able to successfully improve the infringement, he can recover not only his own lost profits, but also any profits accrued by the infringer from the infringed work.[7]

Although the copyright process is quite inexpensive and simple, fashion companies must be very careful not to be copyright infringers themselves. Take, for example, a T-shirt that features a painting, sculpture, or even graffiti. Fashion companies should be aware that they may need to obtain a license or copyright ownership from the photographer. As with all intellectual property tools, care should be taken when assessing the copyright status of a particular product.

Scenario 2: Protect new designs by patent.

The next time you want to protect a great, innovative design that you think will be a big hit in the market, you should consider getting a design patent. Design patents are great for new designs that are expected to be sold beyond a year or season. The essential elements of a design patent are that the new creation be “novel, original and ornamental”.[8]

A new design may be the subject of a patent unless it has been (1) described in a printed publication; (2) for public use; or (3) offered for sale more than one year before the patent filing date.[9]

The design patent application process is simple. As long as the design is new, original and not identical, the design patent can protect the ornamental features of the design.[10] It is important to note that the protection of a design patent only extends to ornamental features rather than functional features.[11] Ornamental refers to the visual appearance of a product such as its color or shape.[12]

The examination process for the United States Patent and Trademark Office (USPTO) typically takes only nine to 12 months, and patents remain in effect for 15 years from the date of issue (or 14 years, for applications filed before May 13, 2015).[13] Once the USPTO issues a design patent, the method of execution is also relatively simple. A designer can establish an infringement “if an ordinary observer, familiar with the prior art…would be deceived into believing that the [accused design] is the same as the patent [design].”[14] The designs do not necessarily have to be identical; an infringement can be found even when there is only a minor difference between the patented design and the design of an incriminated article.[15]

Even if a design does not have significant longevity and does not last beyond a single season, a design patent may still be useful if later on a competitor comes up with a counterfeit product. In this scenario, the designers would then be entitled to recover the profits as a remedy.

Scenario 3: Protecting well-known products with a commercial presentation.

The next time you think you’ve found your star product, your work may be protected by business attire. Trade dress is ideal for products that have had great success and longevity in that consumers associate the non-functional aspects of the design with a particular manufacturer.[16] Trade dress generally protects the “total image and general appearance” of a product, but can extend to characteristics such as size, shape, color or texture.[17]

A product’s trade dress can be a collection of individual elements that are not protectable separately, but which together are protectable because they distinctly identify the source of a product.[18] It is important to note that the product as a whole cannot be functional.[19] A product feature is functional if it is essential to the use or purpose of the item or if it affects the cost or quality of the item and would place competitors at a disadvantage unrelated to reputation.[20]

Unlike design patents, trade dress protection has no duration and is enforceable as long as the “secondary meaning” of the product exists or the product is inherently distinctive.[21] A demonstration of secondary significance is essential to qualify for trade dress protection. A secondary meaning can be established when a manufacturer can demonstrate that, in the mind of the public, the primary meaning of a product feature or term is to identify the source of the product rather than the product itself. .[22] Courts consider the following seven factors to determine whether a trade dress has a secondary meaning: (1) direct consumer testimony, (2) consumer surveys, (3) exclusivity, duration and manner of use, (4) quantity and mode of advertising, (5) amount of sales and number of customers, (6) place established in the market and (7) evidence of intentional copying.[23]

In the case where a designer seeks a trade dress infringement action, the court considered the following three elements: (1) distinctiveness, (2) non-functionality, and (3) likelihood of consumer confusion. between the trade dress of the owner and that of the counterfeiter. business attire. In addition, the remedies available for trade dress infringement are the same as for trademark infringement.[24]

In order to provide the best protection, trade dress should be considered in circumstances where a fashion product has sufficiently established that the design has secondary meaning, use of the design has been continuous, and the inventor is willing to control the market at all times and to enforce its rights.

In sum, these scenarios illustrate just a number of ways you can use IP tools to protect your fashion design. So the next time you find yourself in one of these scenarios, be sure to consider these protective factors via copyrights, design patents, and trade dress.


[1] 17 USC § 102(a)(5); see also Darden v. Peters488 F.3d 277 (4th Cir. 2007).

[2] See 17 USC §§ 302.

[3] ID.

[4] ID.

[5] Home Design Servs., Inc. c. Turner Heritage Homes Inc.., 825 F.3d 1314, 1320 (11th Cir. 2016).

[6] ID.

[7] Hamil America, Inc. vs. GFI193 F.3d 92, 108 (2d Cir. 1999).

[8] Smith v. Dental Products Co.140 F.2d 140, 152 (7th Cir. 1944).

[9] 35 USC § 102(a); see also Pride Family Brands, Inc. v. Carl’s Patio, Inc., 992 F. Supp. 2d 1214, 1217 (SD Fla. 2014).

[10] See OddzOn Prods., Inc. v Just Toys, Inc.122 F.3d 1396, 1405-06 (Fed. Cir. 1997).

[11] Richardson v. Stanley Works597 F.3d 1288, 1293 (Fed. Cir. 2010) (citing Lee v. Dayton-Hudson Corp.838 F.2d 1186, 1188 (Fed. Cir. 1988)).

[12] See, for example, Blue Ribbon Pet Prod., Inc. v. Rolf C. Hagen (USA) Corp., 66 F. Supp. 2d 454, 458 (EDNY 1999)

[13] 35 USC § 173.

[14] Egyptian Goddess, Inc. v. Swisa, Inc.543 F.3d 665, 681 (Fed. Cir. 2008).

[15] Crocs, Inc. c. Int’l Trade Commun’n598 F.3d 1294, 1300 (Fed. Cir. 2010) (citing Payless Shoesource, Inc. v. Reebok Int’l Ltd.998 F.2d 985, 991 (Fed. Cir. 1993)).

[16] See, for example, Decorations for Generations, Inc. v. Home Depot USA, Inc.128 F. App’x 133 (Fed. Cir. 2005).

[17] See Two Pesos, Inc. vs. Taco Cabana, Inc.505 US 763, 764 (1992).

[18] See, for example, Fuddruckers, Inc. v. Doc’s BR Others, Inc.., 826 F.2d 837, 842 (9th Cir. 1987).

[19] See ID.

[20] Qualitex Co. c. Jacobson Prods. Co., Inc.., 514 US 159, 165 (1995) (citing Inwood Labs., Inc. v. Ives Labs., Inc.456 US 844, 850 (1982)).

[21] Nora Beverages, Inc. c. Perrier Group of America, Inc.269 ​​F.3d 114, 118 (2nd Cir. 2001).

[22] Inwood Laboratories.456 US to 851.

[23] General Motors Corp. vs. Lanard Toys, Inc.., 468 F.3d 405, 418 (6th Cir. 2006).

[24] See Allstate Ins. Co. c. Airport Mini Mall, LLC, 265 F. Supp. 3d 1356 (ND Ga. 2017).

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