Fashion has traditionally relied on a calendar that showcases seasonal collections six months early, then makes pieces of the collection available a month or so before the season starts. But following this traditional calendar makes designer collections easy prey for fast-fashion retailers in the business of turning out trendy pieces faster than a designer’s collection reaches retail and at lower price-points. Fortunately, design patents and trade dress protection offer designers a way to keep their innovative designs from appearing on fast-fashion retail racks within days of a runway debut.
While design patents and trade dress both protect the appearance and aesthetic features of a product, they have important differences.
Trade dress is the overall commercial look and feel of a product that indicates or identifies its source and distinguishes it from other sources; think Christian Louboutin’s red soles. Trade dress protection for a design is based on the total image of a product and can be based on shape, size, color, texture, and graphics. To be eligible for registration, trade dress must be a source identifier, be distinctive in the marketplace, be used in commerce, and be primarily non-functional. Trade dress protection lasts as long as the trade dress is used in commerce.
Trade dress rights may be easier to establish and preferable to other means of design protection. But it has proven exceptionally difficult for designers to win a claim for trade dress infringement. In 2000, the U.S. Supreme Court held that product design trade dress is never inherently distinctive and product design must have achieved secondary meaning to be protected. “Second meaning” requires that, for a design to qualify for trade dress protection, a consumer must associate that design with a particular designer. Due to the growth of fast-fashion mega-labels like Zara and H&M, the practical effect of this decision is that new or emerging designers, whose product is not on the market long enough to develop secondary meaning, cannot get protection from trade dress infringement. If their designs are quickly copied by fast-fashion retailers, then they are effectively prevented from establishing a meaningful connection in the public mind between design and designer.
A design patent is a form of legal protection granted to the ornamental design of a functional item. It protects the way an item looks. A design patent can be used to protect an item that is ornamental, – but only to the extent that the item’s ornamental features dominate functional features – new, and does not exist in the prior art. Design patents are registered with the patent office and last a maximum of 15 years.
Design patents may alleviate problems that arise from the trade dress requirement that a design achieve secondary meaning to be protected from infringement. Design patents can be obtained in about three to six months. Registering a design patent affords a new designer the opportunity to protect the ornamental elements of his design by blocking infringing copies and counterfeits.
Design infringement actions based on design patent rights focus on the similarity between the design features shown in the design patent drawings and the infringing design. Thus, it is often easier and less expensive to prove infringement of a design patent than to prove infringement of trade dress.
Design patents are beneficial to emerging designers and established designers alike. Established fashion houses have taken advantage of the availability of design patents to protect their designs – especially. For example, Diane Von Furstenberg holds a design patent on her design for the DVF Chainmail Clutch. And, Christian Louboutin has recently filed to register numerous design patents in the wake of the lawsuit against Yves St. Laurent over rights in Louboutin’s signature red-soled shoes. Currently, Louboutin holds more than 10 design patents on its shoe designs.
Dual Design Protection
When the shape of product is ornamental and also serves to distinguish and signify the source of the product to consumers, US patent law permits dual trade dress and design patent protection for that product. Combining both design patent rights and trade dress protection increases the protections and benefits a fashion designer would receive versus holding a design patent or seeking to establish and enforce trade dress rights alone. Notably, however, some US courts are critical of the availability of trade dress protection for designs covered by design patent registration because of the developed secondary meaning may be due to the design – not the designer, who is the source of the goods. Fortunately for designers, this is a minority view.
Obtaining a design patent early in the design process can afford a new or lesser known designer the time to develop necessary secondary meaning for her designs to establish trade dress rights. Thus, a savvy designer can develop dual protection for her product designs. Since trade dress protection also depends on the ornamental aspects of a design, another benefit of holding a design patent is that it may serve as presumptive evidence of the ornamental elements required to achieve trade dress protection.
* Jennifer S. Schultz and Jessica Bruder - Kane Russell Coleman & Logan PC.