OBTAINING EXCLUSIVE RIGHTS IN YOUR FASHION DESIGNS

Fashion designs can be protected through trademark law, copyright law and patent law.

Trademark Law

Trademark law can grant indefinite exclusive rights to a nonfunctional product design. That design cannot be the subject of a utility patent, however. If it was, it would be functional. It also (a) cannot be promoted as improving the function, operation or ease of use of a product, (b) cannot be the result of a simpler or more inexpensive manufacturing process, (c) cannot be essential to the use or purpose of the product or (d) affect the cost or quality of the product.

If a product design meets these conditions, and the product bearing the design is used in interstate or foreign commerce, the design can be registered in the United States Patent and Trademark Office on the Supplemental Register. A Supplemental Registration will put subsequent trademark applicants and others on notice that you are claiming trademark rights to your design, and later trademark applicants will be barred from registering confusingly similar designs for related products.

If, additionally, you can prove to the satisfaction of the United States Patent and Trademark Office that your design is distinctive, it may be registered on the Principal Register. A trademark registration on the Principal Register is prima facie evidence of your ownership of and exclusive right to use the registered design and it can be used to get the Customs and Border Protection Agency to stop the importation of competing products featuring your design. It will also place subsequent applicants and others on notice that your design is claimed as a trademark and bar later applicants from registering confusingly similar designs with the U.S. Patent and Trademark Office.

In order to prove to the satisfaction of the Patent Office that your product is distinctive, you will need to submit to that Office sales figures and advertising expenditures for your product  design as well as samples of your product advertising that highlight the design. This advertising should call attention to your design in a manner which will cause customers to recognize it as your trademark. If your sales figures and advertising expenditures prove sufficiently substantial; if you advertise and promote your product in relevant trade and customer publications, online and at trade shows, and if this advertising draws attention to your design, you may be able to obtain recognition and protection of your design as a registered trademark on the Principal Register.

Two examples of how this can be done are set out below. Levi Strauss & Co. registered the combination of the shape of a pocket, the distinctive stitching on that pocket and the placement of a tab on that pocket as U.S Registration No. 2,791,156 for “Pants, jeans, shorts, skirts and jackets.” Tommy Hilfiger registered a striped V-shaped insert facing sewn into the neck and collar portion of its shirts, sweaters, T-shirts, sweat shirts, vests and jackets as U.S. Trademark Registration No. 1,994,451 for those goods.

Copyright Law

It is the policy of the U.S. Copyright Office that “Designs for useful articles such as vehicular bodies, wearing apparel, household appliances and the like are not protected by copyright.”

However, the Supreme Court decided in  Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017) that if a design of a useful article “can be perceived as a two- or three-dimensional work of art separate from the useful article”and was sufficiently creative to “qualify as a protectable pictorial, graphic, or sculptural work,” i.e., it could be imagined separately from the useful article into which it is incorporated, then it would be eligible for copyright protection.

The Court held in that decision that the two-dimensional applied art found on the surface of cheerleading uniforms could be protected by copyright. However, that protection was limited to the surface designs on the uniform and did not not extend to garments that were identical in shape, cut, or dimensions to the uniforms at issue in that case. In addition, note that the test for copyright infringement is substantial similarity and registration is a prerequisite to asserting an infringement claim.

Design Patents

See U.S. Patent #D739,995 S registered to Stella McCartney for the design of a dress at https://pdfpiw.uspto.gov/.piw?docid=D0739995&SectionNum=1&IDKey=CA09BA662498&HomeUrl=http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO2%2526Sect2=HITOFF%2526p=1%2526u=%25252Fnetahtml%25252FPTO%25252Fsearch-etitive products woubool.html%2526r=7%2526f=G%2526l=50%2526co1=AND%2526d=PTXT%2526s1=Stella.ASNM.%2526s2=McCartney.ASNM.%2526OS=AN/Stella%252BAND%252BAN/McCartney%2526RS=AN/Stella%252BAND%252BAN/McCartney

Design patents protect the ornamental features of a functional design and provide exclusive rights in those features for a period of fifteen years starting from the date of issuance of the patent. You must file your patent application with the U.S. Patent & Trademark Office within one year from the date that your design was publicly disclosed. The design must be novel and non-obvious in the relevant industry to qualify for patent protection. Only the appearance of the garment may be protected and not its structural or functional features. The protection obtained is against the making, using, offering for sale or selling of a similar design, one which an ordinary observer familiar with competitive products would be deceived into believing is the same as the patented design. Minor differences between the designs would not prevent a finding of infringement.

My firm can protect your fashion designs through trademark and copyright protection and works with licensed patent attorneys who can protect those design through design patent registration.

About ERIC WACHSPRESS

The material on this website is for informational purposes only. It should not be considered legal advice and is not intended to create an attorney-client relationship. If you have questions regarding any material presented herein, we recommend that you consult an attorney. This web site and information presented herein were designed in accordance with Illinois law. Any content in conflict with the laws or ethical code of attorney conduct of any other jurisdiction is unintentional and void. I am a Chicago attorney practicing in the areas of trademark, copyright and information technology law as well as general corporate law. Formerly a trademark examining attorney with the United States Patent and Trademark Office, I have been in private practice since 1987 representing clients in a wide variety of industries, including the consumer products, financial services, information technology and entertainment industries. You can contact me at markscounsel@gmail.com, by phone at 773.934.5855 or by mail at 417 S. Jefferson St., #304, Chicago, IL 60607 USA
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