A lucrative method of brand protection for fashion designers is the protection of their designs and patterns through trade dress registration. The registration of trade dress allows a fashion designer to protect the design, configuration, shape, color and even appearance of their products from infringement and counterfeiting. Powerhouse fashion brands have taken advantage of this protection methodology by protecting the designs for leather bag pendants, belt buckles and even iconic stitching patterns. While the scope of protection within the sphere of design can be significant, there are limitations to consider whenever seeking protection of your designs via trademark or trade dress registration.
Designs are only eligible for protection if they are non-functional. "Functional" for purposes of design protection refers to design elements that are essential to the use or purpose of the clothing or affects the cost or quality of the clothing in some way. Therefore, if you wish you protect a product design element of a garment, it must serve a purpose that exceeds function.
Avoiding Ornamental Use
One of the most common issues encountered by fashion designers and clothing brands involve a refusal on the basis that a particular design is ornamental. A rejection based on ornamental use is received when the design that is the subject of registration purely serves an aesthetic purpose, or in other words, merely serves as a decorative feature on a product and is not used to identify the source of the product itself. For example, the iconic red bottom sole found on shoes by Christian Louboutin® and the stitching located on the back pocket on a pair of Levi's® denim jeans, while serving decorative purposes, also serve as unique source identifiers for the brands they represent and are therefore entitled to registration. When you see a red bottom shoe, you automatically think of the quality and exclusivity of a Christian Louboutin® shoe, when you look at the arched stitching on a pair of Levi's®, you are reminding of the quality and history of the legendary brand. It is critical that when deciding whether or not to protect a design, that you consider its overall usage, and its purpose before seeking registration.
Distinctiveness references the ability of a design to distinguish the source of one product from another. When you apply for trademark registration, the trademark office measures your design's ability to be seen as inherently distinctive, meaning that the design is unique and uses un-common features (for example, the Louis Vuitton® LV® Print). If your product design is not inherently distinctive, then it can obtain its distinctiveness through its use over time, referred to as acquired distinctiveness or secondary meaning. Designs do not qualify for registration if they are not inherently distinctive or cannot be shown to have acquired distinctiveness through its use in the marketplace.
Product Design As A Logo
A unique way of qualifying a product design as a registrable trademark is to register the product design as a logo for your brand. Registration as a logo is a unique way to obtain registration for a design that may not be inherently distinctive and would nullify the requirement that your design garners acquired distinctiveness if the product design is being used as an unambiguous source identifier. It is essential, however, to make sure the mark is being used in such a way that is qualified to function as a trademark.
Expanding a brand and protecting multiple aspects of your business including logos, slogans, names and product designs is a unique strategy in building a robust brand presence with significant enforcement tools to protect your brand.
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Hawkins IP is an intellectual property law firm specializing in the protection, maintenance, and monetization of its client's trademarks. We are dedicated to representing creators. If you have any questions regarding this article or would like to speak with an experienced trademark attorney, reach out and let's chat.