A How-To Starter Guide by Student-Attorney Jacqueline Paetzold

The Issue: Threatening Designers’ Creative Investments

Designers and their financial viability face many potential threats. Modern technology allows runway designs to be quickly dispersed, enabling almost immediate production of knockoffs and counterfeits. Further, inventions such as 3D-printing could make it possible for even the average consumer to replicate fashion designs.[1] These issues give rise to the need for legal remedies. Though limited in its protection, intellectual property (IP) law offers designers a chance to enforce their rights against infringers.

 

Legal Protections Available for Fashion Designs

 

 

Although U.S. IP law does not protect fashion designs in their entirety, it offers fashion three different forms of protection for certain elements of designs: trade dress, copyright, and design patents.

 

Trade Dress

 

While trademark protects brand names and logos used to identify products, trade dress is a subset of trademark that extends to the “overall appearance” of a product, which can be useful for fashion designs. Protection only extends to aspects of the design that are non-functional and establish consumer association with the brand. Trade dress prevents other companies from using unfair practices to compete (e.g., preventing another footwear producer from mimicking Christian Louboutin’s red-soled bottoms and causing consumer confusion as to the source of the shoes).

 

  • What? Used to protect shoes, handbags, other accessories, and design elements such as shapes/sizes, colors, patterns, and prints. Hard to establish non-functionality and brand association of entire clothing designs.
  • How? Trademark can be secured solely through commercial use, but state registration (average $100-200 fee) provides public notice of use, and federal registration ($225-400 fee) is required to bring an infringement lawsuit.[2]
  • Duration? Federal rights are granted on a 10-year renewal-term basis (with a declaration of use between years five and six), but trademarks can last indefinitely with proof of continued use.[3]

 

Copyright

 

Copyright can cover designs that are original, creative, and physically or conceptually separable from the function of the article. The design must be able to exist independently of the article’s functional aspects, and this can be a hard test to fulfill. However, copyright can be useful because it affords rights against production, distribution, or display of the design or substantially similarly copies.

 

  • What? Used to protect jewelry, patterns, prints, embellishments, or other design elements. Does not extend to clothing itself (only design elements), because clothing is a useful article unable to exist independently from its utilitarian features, but copyright can extend to clothing sketches/fashion illustrations.
  • How? Copyright vests automatically upon creation, but registration ($35 fee) is required in order to bring an infringement lawsuit.[4]
  • Duration? Rights last 70 years beyond the life of the designer (or last surviving designer if created jointly), or in the case of a work made for hire, 120 years from creation.[5]

 

Design Patent

 

Design patents are available for designs that are novel, ornamental (non-functional), and nonobvious. Patents are useful because they grant the designer the right to exclude others from making, using, selling, or importing similar or substantially similar products. Further, a designer is not limited to a single patent per product, enabling them to protect multiple elements of a design. It’s important to note, however, that the patent only covers the look of a design, not the item itself.

 

  • What? Used to protect footwear, jewelry, handbags, other accessories, and design elements. Clothing designs as a whole are often functional, obvious, or not novel, and therefore ineligible for a design patent.
  • How? Patents require an application including an introduction, title, detailed description (background, explanation, and research related to the design), figures/drawings, the claim itself (defines the design/boundaries of the patent right), application data sheet (including designer bibliographical information), and fee (varies substantially). The application process can be lengthy and expensive.[6]
  • Duration? Rights last 15 years from date of patent issuance.[7]

 

Which form of IP offers the best protection?

 

It depends on the design

 

Choosing the right form of legal protection depends on what the designer is trying to protect. Each IP branch has different requirements. Trademark and copyright protect nonfunctional items. Design patents, on the other hand, can protect the ornamental aspects of functional items. Trade dress, which refers to a visual impression (as an indicator of the source), does not protect patterns, designs, or artwork in and of themselves. These elements require copyright or patent protection.

 

It depends on the designer

 

A design may be subject to more than one type of protection, and the designer must choose what protection or combination of protections best fits his or her needs. For example, if a designer created a special garment and is trying to protect the clothing piece itself (such as an ornate collar or elaborate ruffled skirt), she may seek the protection of copyright. On the other hand, if a designer is trying to build a brand with a unique style of handbags, she may seek a design patent combined with trademark protection to protect the look and goodwill of her label.

 

There are many factors to consider. Patents, for example, grant protection even against those who independently invent the same thing—to prove infringement, the designer would not have to prove the infringer copied. Additionally, patents give exclusivity over the design for a set number of years. Even if the designer does not make or sell the product, it remains protected during that term. Unlike patents and copyrights, trademarks do not expire after a fixed duration, but require continued use and exclusive association of the image or design with the product. The ability of a design to establish consumer association with the brand usually takes time, inhibiting trademark’s ability to offer immediate protection. Patents, similarly, can take 12-18 months to issue, in contrast to copyright’s immediate and automatic vesting of ownership upon creation.

 

These are just a few of many considerations designers should keep in mind when deciding what, if any, form of IP law may be able to protect a particular fashion design.

 

Do I need an IP attorney?

 

An attorney is a must if seeking to enforce IP rights through a lawsuit. Obtaining protection for designs, however, can be done without an attorney. Generally speaking, one can easily register a trademark or copyright without legal assistance.

 

Patent applications can also be done alone, but the process is more complex and can benefit from professional assistance. If the designer doesn’t have time to thoroughly research existing design patents before applying, or has a complex design and wants to increase the likelihood of being issued a patent, it may be wise to hire an experienced patent attorney who can help build a better case for the design.

 

Other resources…

 

For trademark or patent guidance, visit the Patent and Trademark Office website at www.uspto.gov. For copyright guidance, visit the Copyright Office website at www.copyright.gov.

 


 

[1] https://www.taylorwessing.com/download/article_fashion_3d_printing.html

 

[2] https://www.uspto.gov/trademark/fees-payment-information/overview-trademark-fees

 

[3] https://www.uspto.gov/about-trademarks

 

[4] https://www.copyright.gov/about/fees.html

 

[5] https://www.copyright.gov/circs/circ15a.pdf

 

[6] https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/design-patent-application-guide

 

[7] https://www.upcounsel.com/design-patent-term