Fashion and apparel designers are always creating new looks. And many look to trademark laws to protect their designs, but they often fall short of being able to use trademark laws to protect those designs.
In this week’s post we want to explore options for designers to use trademark laws to protect their creative works.
Protection only extends to source identifiers
As we have covered here before, the Trademark Act primarily serves to protect names, logos, and other source identifiers (read more about that here). However, there is also “Trade Dress” protection, which extends to designs, packaging, and the specific appearance of fashion apparel. Of course, as with a trademark, the trade dress must serve as a source identifier in order to receive protection.
A great way to think about these two elements is that tags and brand names are likely protectable as trademarks, while unique aspects of a piece of clothing might be protectable under trade dress.
Fashion apparel must obtain secondary meaning
The important thing to remember here is that under the Trademark Act, trade dress can never be inherently distinctive. Therefore, it can’t serve as a source identifier on its own.
However, a doctrine called “secondary meaning” can still allow designers to gain protection under the Trademark Act. Secondary meaning means that, after some time period of actual use consumers begin to recognize your as a source identifier, your design may be protected under the Trademark Act. The down side is that such consumer recognition can take decades to achieve.
Case in point, the famous shoe designer Christian Louboutin began using bright red soles on the bottom of his shoe designs to identify his company as the designer of the shoes. It wasn’t until 2008, however, that they were able to prove secondary meaning and thus obtain trademark protection. The ability to protect his trade dress was even affirmed by a Federal Court of Appeals.
What to do in the time between use and acquiring secondary meaning
Designers might be left wondering how to protect their trade dress before acquiring secondary meaning. The good news is that other intellectual property protection can help. Most specifically, design patents and work well to secure your rights for certain time periods (usually 14 year) and copyrights may be able to assist with protection of any original works you create.
What to do next
The end result is that designers should consider all options when trying to protect their designs: trademark, trade dress, copyright, and patent rights.
When it comes to the trademark elements, be sure to check out MightyMarks®, a leading online digital trademarking firm with low fixed fees for applications and appeals.
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.