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Why Trademarks Matter : Insider Secrets for Your Fashion Law Business

June 25, 2021 Fashion Law

Many fashion designers are aware that fashion does not receive the same protection in the United States as in many other countries around the world. For example, copyrights are not readily available for fashion designs. This means that fashion designers must rely on other forms of intellectual property- trademarks for example. Luckily, there are many aspects of fashion that may be trademarked, including: brand names, product names, and trade dress.

Today, I’m going to be sharing information primarily about trade dress- you can read prior posts for information about brand-naming and what to avoid.

What is trade dress?

Trade dress is defined as the signature design and appearance of the product, together with all of the elements comprising the product’s overall image, which serve to identify the product to consumers. Whew! Still with me? Here’s a simpler way of putting that: think of Tiffany’s signature use of robin egg blue for their packaging. Their boxes and bags are a prime example of trade dress- maybe the best one. In effect, what I’m getting at here is that Tiffany’s packaging evokes the name of the company that sells the product.

However, trade dress has been expanded to protect nonfunctional aspects of the design or configuration of a product itself, where the design communicates a unique source to consumers. Basically, trade dress may include features like color, shape, size, graphics, texture, or even sales techniques. Trade dress has been recognized in the fashion industry for goods like jewelry, children’s clothing, watches, handbags, and tennis shoes.

How do you assert trade dress rights?

Under the Lanham Act, trade dress rights are established by showing: (1) A precise expression of the character and scope of the claimed trade dress, either in words or images; (2) that the claimed trade dress is nonfunctional, meaning it is not essential to the product’s function; (3) that the claimed trade dress has secondary meaning; and (4) that there is a likelihood of confusion between the plaintiff’s goods and the defendant’s.

Designers should be aware that courts will often deny protection to a trade dress if important elements of the trade dress are purely functional. If, however, the court finds a trade dress to be distinctive and protectable, it may enjoin infringement of the trade dress via a specific injunction that lists in detail the elements that make up the protected trade dress and that a defendant cannot use in combination.

What makes trade dress distinctive?

There are several factors that the Federal Circuit has adopted to decide whether trade dress has secondary meaning:

  • association of the trade dress with a particular source by actual purchasers (typically measured with customer surveys);
  • length, degree, and exclusivity of use;
  • amount and manner of advertising
  • amount of sales and number of customers
  • intentional copying; and
  • unsolicited media coverage of the product embodying the mark.

Hopefully this has been useful. Keep an eye out for more posts- specifically ones addressing trademark infringement and defenses to trademark infringement.