How Do I Protect My Fashion Designs?: The US Lawyer

Managing Intellectual Property

October 1, 2011

Logos, pocket stitching, appliqués, fabric patterns and similar optional elements may be protectable under US trade mark and copyright laws, but clothing designs themselves are limited to design patent protection. High-end shoe maker Louboutin recently attempted to add to the existing arsenal by claiming the colour red for its signature shoe soles, but a district court ruled against the company in August.

The Innovative Design Protection and Piracy Prevention Act before the Senate seeks to offer expanded protections for three years from first publication for “unique, distinguishable, non-trivial and non-utilitarian variation over previous designs” against “substantially-identical copies” made with knowledge of the protected design (although no registration is required, and thus clearance may be difficult). This bill is said to have more support than its many unsuccessful predecessors, but there have been concerns that it could foster litigation and chill creativity; that it would result in only the wealthy being able to afford fashionable attire; and that the current system may actually promote trends that benefit the industry.

In the meantime, many fashion companies have developed a distinctive logo that is protectable both under trade mark and copyright law and incorporating that logo into their goods. The value of logos to companies can be evidenced by the ever-increasing size of the Ralph Lauren polo player logo, for instance.

Companies like Levi’s have benefited from enforcing a distinctive rear-pocket stitch design; Chanel and others have benefited from developing recognisable handbag and other designs protectable under trade dress law. Others simply become known for a particular copyrighted fabric design. This range of possibilities can add tremendous value, from Disney’s Mickey Mouse ears on hats to the Burberry plaid on coats and pet leashes.

Where possible, IP registration is recommended, but it is important to seek the most beneficial form of protection. For example, a unique design splashed across the front of a shirt may be protectable as a copyright, but non-distinctive and therefore registrable as a trade mark only with a showing of acquired distinctiveness or secondary source. This is usually shown by proving consumer recognition due to more than five years of use, which can be unrealistic in the fast-moving world of fashion.

As to trade mark protection, any word, logo, trade dress, colour, sound or scent may be protected as a trade mark, with varying degrees of distinctiveness necessary. Among the many benefits of registration are prima facie evidence of the validity of the registration, nationwide rights, the ability to register with US Customs to bar import of infringing goods and an unlimited duration of protection.

Design patents for many items can co-exist with trade dress rights, and, in fact, may be evidence of the non-functionality of the design. However, registration is relatively expensive and slow, it is only available to non-functional, non-obvious, ornamental designs and protection lasts only 14 years, although trade dress protection can then be relied on, provided that secondary meaning has developed. 

Dress designs are not protectable under US copyright law. However, any separable elements of that dress that are not utilitarian may be protectable. Budget permitting, it is advisable to have a programme in place for routine copyright registration of valuable elements: if registered quickly, statutory damages and attorney fees may be available, and these can provide effective ammunition in disputes. Copyright registration also allows for registration with US Customs, which is advisable, as it can protect rights without expensive litigation.

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