In an effort to assist consumers in distinguishing between the various different products they offer, as well as differing styles, cuts, washes, etc. within a collection, brands assign style names to their garments and accessories. Used in a manifold of ways, style names may be located on the labels sewn in the inside of garments, printed on hangtags or included in the product descriptions on their e-commerce sites. At the same time, they can be promoted as hashtags by brands – and ideally, their customer bases – on social media, or included in the copy of an ad campaign. 

While style names are extremely common in the fashion business, something that no small number of companies fail to realize is that the use of style names involves legal risks, particularly since many of those names are already registered as trademarks, which may give rise to conflicts. Germany, for instance, has become a popular venue for disputes involving style names in recent years. (Other jurisdictions have also seen an influx of style name-specific cases in recent years – from those tied to swimwear brand Triangl’s stable of offerings to a case over a style name used by Kylie Jenner’s $1 billion beauty venture Kylie Cosmetics).

Interestingly, only comparatively few claims are raised by actual competitors, and instead, they are initiated by trademark owners that are trying to benefit from the peculiarities of German civil procedure and trademark law by monitoring the market for possibly infringing style names in order to collect legal fees and damages. In many cases, these trademark holders will threaten to sue other companies in the distribution chain, including a brand’s authorized retailers, in order to put pressure on the fashion brand, itself, to settle the matter regardless of the merits of its claims.

Infringing Use or Mere Designation? 

According to European case law, the owner of a trademark may oppose the use of a sign identical with the trademark for goods identical with those for which the trademark is registered only ifsuch allegedly infringing use is likely to negatively impact one of the functions of the trademark, namely, its ability to distinguish the source of the trademark holder’s products/services. Whether a style name is perceived by consumers as an indicator of source (i.e., a trademark) that enables them to distinguish the goods/services of one company from those of another or whether it is used as a reference to differentiate between one brand’s own styles is a critical inquiry and one that may give rise to considerable debate. 

In fact, many styles names have become well-known in their own right over time. Handbag names, such as Louis Vuitton’s “Speedy,” Gucci’s “Jackie” and “Dionysus,” the latter of which was Alessandro Michele’s first official bag in his role as creative director, and Hermès’ uber-famous “Birkin” and “Kelly” names, are demonstrations of this. Correspondingly, the case law of the German instance courts on whether the unauthorized use of a mark as a style name constitutes trademark infringement use has not been uniform. 

This is particularly true given that German law allows for forum shopping, and as a result, trademark owners have usually sought the assistance of courts in Hamburg and Frankfurt, which have regularly assumed that style names are understood by the relevant public as an indication of origin and thus, as (secondary) trademarks.

The situation is complicated further by the fact that the cease and desist letters in these cases are often sent by companies that do not actually manufacture or sell clothing or accessories, or that are – at the very least – not well known for their offer making and selling of apparel and accessories. Instead, they tend to merely hold trademarks and engage in enforcing their rights to collect attorney fees and damages, not unlike the operation of patent trolls (or non-practicing entities) in the U.S. In most cases, these trademark holder usually will not let a party “off the hook,” so to speak, unless the alleged infringer issues a formal cease and desist declaration – complete with a contractual penalty clause, as is common practice under German law – and makes a payment to settle the case amicably. 

To increase pressure, these claimants will raise the stakes by threatening to interfere with allegedly infringing fashion brand’s distribution system, including by sending warning letters to and/or suing their retailers. 

Guidelines by the German Federal Court of Justice 

Since at least some courts have taken an extremely rights holder-friendly approach and ruled against the fashion brands (seemingly regardless of whether their uses of the style names amount to trademark uses or not), these cases were – until recently – difficult to defend. The state of things has changed to some extent, however, thanks to the judgments of the German Federal Court of Justice in two such cases last year. 

In these cases, the Federal Court of Justice clarified that the use of a distinctive and non-descriptive trademark as a style name does not, in itself, result in a determination that the style name is being used as a trademark. Instead, whether the style name is being used as a mere product designation (between a single brand’s products) or whether it is being used as an indicator of source must be determined on a case by case basis. Against that background, the Federal Court of Justice has established some general guidelines for assessing whether a style name is used as a trademark – or not – in an individual case … 

First names used by several manufacturers as style names or particularly common first names – According to the Court’s previous case law, these types of names may be understood by the public as mere model designations. At the same time, however, the Court has held that it cannot be assumed from this that less common first names are always understood as to be acting as trademarks; 

Directly affixed to the product – The public will typically see a word/name that is directly affixed to the product (e.g. on a label sewn in the inside of the waistband, on a leather piece attached to the outside of the waistband, or prominently placed on a garment or accessory) as a trademark; 

Use on hangtags – The printing of a style name on hangtags attached to the garment may also be understood to act as a trademark depending on the circumstances (including specific placement, size of the text, etc.); and

Use in sales offers, (e.g. in catalogues or on the internet) – If the sign is used in a sales offer (e.g. in a catalog or on the internet), the offer as a whole and the character of the mark must be considered. If it can be assumed that the style name is well known, there is a strong argument in favor of using it as a trademark, regardless of the further circumstances. Even if the style name is not known, use as a trademark can be assumed, particularly if the style name is used in direct connection with the manufacturer’s brand name. In addition, an eye-catching emphasis speaks to use as a trademark.

As is often the case, the devil is in the details when it comes to distinguishing between the use of style names as trademarks and as mere model designations. While it is relatively clear that use of a style name on a product, itself, can often be assumed to be trademark use, recent decisions by the courts illustrate that in instances of advertising, all of the details of the advertising campaign or offer have to be taken into consideration. This includes the overall layout of the ad and the relationship of the mark at issue to the manufacturer’s brand, as well as further designations such as price, size, product description, and delivery modalities. Nevertheless, the guidelines developed by the German Federal Court of Justice open up considerable room for argument for fashion brands on the receiving end of such threats of litigation or actual litigation proceedings.

As far as preventive measures are concerned, fashion companies that are using hundreds or even thousands of style names, worldwide trademark clearance is rarely an option in light of the considerable costs involved. However, as if often the same, certain style names become an important element of a company’s business, likely in connection with best-selling or other staple products, as has been the case for Louis Vuitton’s Speedy or Hermès’ Birkin. In instances like this, it is worth seeking trademark registrations for those names, which is precisely what Louis Vuitton and Hermès have done. 

Additionally, compliance with a few simple rules when using style names based on the aforementioned German Federal Court of Justice’s guidelines can significantly minimize the risk of objections by third-party rights holders.

Dr. Sandra Mueller is a senior associate at Patton Squire Boggs, where she focuses on litigation in trademark, design and unfair competition disputes.

Teens are spending less than ever before on handbags, and while they are similarly spending fewer dollars on clothing, demand for pre-owned products is gaining momentum. According to the 40th bi-annual “Taking Stock with Teens” report, which saw Minneapolis, Minnesota-headquartered investment bank Piper Sandler survey 9,800 teens (the average survey participant was just under age 16) from 48 states between August 19 and September 22, 2020, self-reported spending hit its lowest levels in two decades, with both COVID-19 and larger consumption trends, alike, playing a role in how teens are spending their money. 

The continued impact of COVID-19 has certainly affected spending for individuals no matter the age bracket, with the surveyed teens, alone, saying that they have spent about $2,150 this year, falling 9 percent compared to this time last year. Pandemic spending-contractions aside, some interesting trends have emerged among teenage consumers – from continued drops in spending on handbags to skincare spending eclipses cosmetics spending for the first time ever among female consumers. A few key takeaways from the report are as follows  … 

E-Commerce & Social Media

54 percent of the teens surveyed cited Amazon as their No. 1 favorite e-commerce site, up from 52 percent last year. Chinese fast fashion site SHEIN – the 12-year old digitally-native company that generated a reported $2.83 billion in revenue in 2019 thanks to its sweeping selection of low-cost garments and accessories – took the No. 2 spot for first time, relegating Nike to third.

On the social media front, Snapchat sits atop the list as teens’ favored platform, while TikTok became to the No. 2 top social media site surpassing Instagram; the surveyed teens reported spending an average of 12 hours on the various social media platforms per week. Interestingly, Piper Sandler notes that Pinterest also gained share among teens as they “look for creative outlets and DIY trends to spend their time.”

Handbags

Sales of handbags have been falling among teens in recent years, as indicated by previous surveys, and that remains true. For this period, teens reported spending just $87 on handbags, compared to the $197 that they annually in the category, according to Piper Sandler’s spring 2006 survey. As for the teens that are, in fact, spending on handbags, they are first-and-foremost looking to Louis Vuitton, which beat out Michael Kors for the top spot. Coach also gained share this time around, likely due to its enduring revamp under the watch of creative director Stuart Vevers, which began back in 2013. 

Secondhand Wares

A particularly noteworthy takeaway from the report comes in the form of pre-owned goods. According to CNBC, in terms of apparel, alone, “Shopping for second-hand items is gaining some momentum among teens,” thereby, “stealing market share from traditional players, especially off-price retailers like TJ Maxx and department stores.” Of the nearly 10,000 teens surveyed, 46 percent said that they have purchased second-hand goods from platforms like Poshmark, ThredUp, and The RealReal, and nearly 60 percent say that they have sold items on a second-hand marketplace. 

Cosmetics & Beauty

Cosmetics spending for females down 20 percent compared to the same survey last year; skincare sales for females was down 3 percent, while skincare sales for males was up 12 percent. In terms of retailers, Ulta remains No. 1 beauty destination with 42 percent share (that is a rise of 400 basis points compared to last year), beating out LVMH-owned Sephora. Meanwhile, Target emerged as a favorite beauty destination, doubling its standing over last year. Its rise if likely due, at least in part to its stocking of a growing number of affordable-but-buzzy names, such as Versed, many of which are clean brands. Moreover, the big box retailer has taken steps to diversify its offerings; just this week, for example, it announced that it will begin selling Melē products, which consist of “science-led skincare for melanin-rich skin,” and those of Mented Cosmetics, the Black-owned brand in the business of making nude lipsticks formulated for women of color.

Amazon has remained in the top-five for beauty/cosmetics sales. 

Among the most sought-after skincare and beauty brands, e.l.f. climbed to the No. 2 cosmetics brand from No. 4 last year, “a new survey high,” according to Piper Sandler. Meanwhile, L’Oreal-owned CeraVe took the title of No. 1 skincare brand at “a staggering 28 percent share,” surpassing Neutrogena. Growth for both brands has been fueled by their popularity on TikTok. As for product/brand discovery and inspiration, 84 percent of female participants said that they rely on influencers as their main source. 

Apparel & Footwear

As reported by CNBC, “When it comes to apparel, Nike kept its top spot – a position it has now held in Piper Sandler’s survey for a decade. American Eagle was second, followed by Adidas – with both brands holding their previous positions on the list. The athletic apparel maker Lululemon, though, moved up to No. 6 from No. 7 a year ago, with its comfortable leggings and sports bras gaining in popularity. Fast-fashion chain H&M moved up, while Forever 21 dropped on the list. L Brands’ Victoria’s Secret, known for its racy lingerie, fell to No. 22 from No. 13 a year ago.” 

American Eagle’s inclusion towards the tippy-top of the list is striking, as it has managed to fare far better than many of its fellow stalwart mall brands, which are currently struggling, with many seeking bankruptcy protections both before and during COVID. 

In terms of footwear, Nike was the surveyed teens’ favorite brand, followed by Vans in second and Adidas in third. 

Zara recently introduced a sustainability pledge, one that will see it using entirely “organic, sustainable, or recycled” cotton, linen and polyester by 2025. “We need to be a force for change, not only in the company but in the whole sector,” Pablo Isla, the chairman and CEO of Zara’s parent company Inditex, said in announcing the seemingly revolutionary initiative in July. But the looming question at play is this: can Zara – or any of the other retail giants whose models are inherently depended on high, disposability-centric turnover – ever be sustainable?

As the largest fast fashion retailer in the world, Zara produces around 450 million garments a year and releases approximately 500 new designs a week, or about 20,000 different styles a year. That amounts to more than 450 million items produced per year. The Inditex-owned giant’s high-speed, high-output manufacturing model – which was largely deemed to be a “remarkable feat” in the retail landscape back in the mid-2000’s – has been so successful that it has inspired an entire industry to shift, one that depends on churning out an unprecedented number of fashion garments year-round. In doing so, it helped to herald in an era of hyper-consumption, which coincided with looming global climate crisis.

Clothing plays a significant role in contributing to the reality that is climate change. The volume of global apparel consumption, for instance, doubled from 2000 to 2014. The average consumer bought 60 percent more clothing in 2014 than in 2000, but kept each garment for half as long before discarding it. Apparel purchases are projected to rise even further – by a whopping 63 percent over the next 10 years, and less than one percent of that clothing is recycled at the end of its already-short lifespan. (And all the while, brands are discarding significant amounts of waste and have been known to destroy tens of millions of dollars of unsold products and unused textiles.)

With production and disposability numbers like these, can any retailer really claim to be sustainable? Almost certainly not. After all, a business model that is based on unending growth is the very antithesis to sustainability, and yet, fashion brands continue to claim efforts related to sustainability. 

For example, some retail giants are introducing recycling programs. Unfortunately, in reality, even if garments are collected by retailers and brands in-store in an attempt to avoid disposal in landfills, the capabilities to recycle clothing at the scale needed for current production rates do not exist. It is also typically more energy-intensive to recycle existing garments than to produce new ones.

Another proposal, the one recently put forth by Zara, aims to use only sustainable fabrics. This is similarly not without issues. This is due, in part, to the fact that there is no such thing as a 100 percent sustainable fabric. Fabrics require a tremendous amount of energy and natural resources to produce. Sustainable fabrics are simply less harmful due to their reduced environmental impact.

More significantly, though, switching to sustainable fabrics while producing garments and accessories in accordance with a model based on producing such volumes of clothing and accessories – especially ones that are produced, promoted and priced in a way to entice disposability – will not make any fast fashion retailer sustainable.

A significant part of the problem is that fast fashion brands, and many of the traditional high fashion brands (the latter of which are often left out of conversations about the need for improvements on the sustainability front), are operating in accordance with a growth model that is predicated on limitless output and high turnover. Large global corporate retailers are not seeking to change their fundamental business model or create cultures of sustainability. That would require re-working their entire business structure, because as of right now, fast fashion is a “grow or die” business, and if this segment’s giants were to nudge consumers towards more responsible consumption behaviors, that would ultimately hurt their bottom line, which is why they don’t.

This is distinct from the approach taken by other, more truly sustainable brands, which focus on creating a culture of sustainability by producing less from the outset. They use strategies like producing made-to-order, so they are not making more than what is sold. They do this because waste is one of their biggest concerns. They also design clothing to ensure durability and longevity, so clothes last a long time in your wardrobe. In the case of Patagonia, for instance, they will also repair your clothing so that you may keep it longer.

The current carbon footprint of the fashion industry is over eight per cent of total global greenhouse gas emissions, larger than all international travel. Therefore, to achieve the United Nations Sustainable Development Goals, including the 2C global temperature target, the fashion industry must play an active role in changing how they operate, source, manufacture, distribute and approach the market.

Solutions to sustainability must include cultural change – including a differing approach to constant disposable consumption – and alternative sustainable business models, as it is not as simple switching out current textiles or packaging for more sustainable versions.

Anika Kozlowski is an Assistant Professor of Fashion Design, Ethics and Sustainability, School of Fashion at Ryerson University. (Edits courtesy of TFL)

In 2010, Apple filed some interesting applications with the U.S. Patent and Trademark Office (“USPTO”). The Cupertino, California-based tech giant was not looking to expand its arsenal of trademark registrations for its name or its apple logo, or for the various product names or even the source-indicating designs of its phones or computers. The company was looking to amass federal protection for “the design and layout of a retail store.” 

Not just any store, Apple was claiming rights on a store that “features a clear glass storefront surrounded by a paneled facade consisting of large, [and] rectangular horizontal panels over the top of the glass front.” Inside of the store, Apple specified “rectangular recessed lighting units,” “cantilevered shelves, and rectangular tables arranged in a line in the middle of the store parallel to the walls and extending from the storefront to the back of the store,” among other things, as part of the protected design. 

In one of the three store design-specific applications, all of which were ultimately registered by the USPTO, Apple went so far as to specify – and thus, claim – colors in connection with the aforementioned layout, such as “light brown” shelves and “light brown rectangular tables,” noting that “the colors and placement of the various items are considered to be part of the overall mark.” 

The applications, while certainly not your average word mark or logo, were not entirely surprising if you consider that Apple’s “store design was of great interest to the company’s former CEO, the late Steve Jobs,” as Reuters reported. Similarly, such claims of protection were not unheard of at the time, as more than a decade prior, the U.S. Supreme Court held that the distinctive decor and open kitchen layout of restaurant chain Taco Cabana’s outposts was protectable. 

While Apple is famous for looking to protect the distinctive elements of its products, as well as those of its sweeping network of brick-and-mortar stores (right down to the drawers and planters), other retailers have also looked to trade dress for protections of their store layouts. 

Around the same time as Apple filed its trademark applications, Stuart Weitzman revealed its first-ever Zaha Hadid-designed flagship, and filed an application with the USPTO (and was granted a registration) for the “three dimensional trade dress of the interior design of a retail store with a color white ‘ribbon’ pattern traversing walls and making up the design of tables, counters, and chairs, and the color white background covering the walls, ceiling and floor.”  

Since then, creative and/or distinctive store layouts continue to be a distinguishing feature for consumers (and thus, for brands), which has prompted companies to seek various types of protection for the elements of their store designs, and to call foul when others get too close with their own in-store layouts, which is precisely what Yves Saint Laurent argued in the 2016 case it filed against Zadig & Voltaire. 

KIKO Milano v. Wycon Cosmetics

A recent decision from the Supreme Court of Italy is worth noting in light of companies’ enduring pushes for store-specific protections, as the court held that the layout and design of the stores of cosmetics brand KIKO Milano can be protected by copyright law. The case got its start after KIKO filed suit against rival cosmetics company Wycon, which it argued was unfairly co-opting the design of its stores, which consist of an open space entry way, walls lined in plexiglass storage boxes, curved islands in the center of each store, and a color scheme of white, black and purple.

Following two favorable decisions for KIKO, in which the district court and the court of appeals held that its store design could be protected by copyright as a work of architecture, Waycon appealed.

Seeking Supreme Court intervention, Wycon argued that such protection was inappropriate, given that a store layout differs from architecture, namely because a layout is not incorporated into a building and is not a permanent structure. Beyond that, Wycon asserted that each element of the layout should be considered individually and must meet the copyright requirement of “artistic value,” which was not the case here. 

Affirming the lower court’s decision, the Supreme Court determined that the way “the various elements” – and the interior design – “of KIKO’s shop layout are combined, coordinated and assembled” is, in fact, protectable under copyright law as a work of architecture, a “significant decision for brand owners currently active in the Italian market and who consider their store layout to be original and creative,” according to Mason Hayes & Curran LLP’s Gerard Kelly. 

More than that, Kelly says that in light of the “recent decision of the Court of Justice of the European Union in Cofemel (C-683/17), where copyright protection was accepted for articles of clothing if they were the creator’s own intellectual creation, it is likely that the KIKO decision on store layouts will be endorsed in other EU countries in due course.” 

At the same time, K&L Gates LLP’s Serena Totino and Georgina Rigg claim that the decision “provides an interesting point of view on unfair competition under European law,” noting that “the Court of Appeal of Milan will now have to consider the issue related to the behavior of competitors, including choosing similar sale assistants’ uniforms, comparable look and feel of single products, packaging and bags as well as analogous marketing campaigns.” 

Brick-and-Mortar Going Forward

COVID-19 is significantly impacting how and where consumers shop, and accelerating e-commerce usage at previously unexpected rates. However, prior to the onset of the global health pandemic (and despite the pre-pandemic rise in e-commerce adoption by brands and usage by consumers), consumers were doing a significant amount of their shopping in brick-and-mortar stores. In fact, as First Insight stated in a March 2019 report, 71 percent of consumers typically spend more per in-store purchase than they do online. 

The pandemic has certainly accelerated online consumption among consumers across the board, and as McKinsey asserts, the longer the crisis lasts, “the greater the likelihood that online and omnichannel purchasing will become the next normal.” Given that states and cities across the globe are engaging in various stages of re-opening of non-essential businesses, Wharton fellow Denise Dahlhoff says that retailers will now have to work hard “to lure customers back [into stores],” and most immediately, “that requires making people feel safe in stores.” 

After this initial (and enduring) re-opening task, brands will also have to make their stores worth consumers’ while, making  “unique in-store experiences” – which very well may include creative and/or distinctive (i.e., copyrightable and/or trademark-centric) elements of a store’s layout – “even more critical than it has been to drive traffic, facilitate the omni-experience, and improve profitability,” per McKinsey. And with that in mind, the protectability of such layouts will likely continue to be a relevant consideration for brands even as e-commerce continues to grow. 

Consumers have become more aware of the environmental impact of our clothing choices. The fashion industry has seen a rise in “green,” “eco” and “sustainable” clothing. This includes an increase in the use of natural fibers, such as wool, hemp, and cotton, as synthetic fabrics, like polyester, acrylic and nylon, have been vilified by some. However, the push to go “natural” obscures a more complex picture. 

Natural fibers in fashion garments are products of multiple transformation processes, most of which are reliant on intensive manufacturing as well as advanced chemical manipulation. While they are presumed to biodegrade, the extent to which they do has been contested by a handful of studies. They can be preserved over centuries and even millennia in certain environments, and where fibers are found to degrade, they may release chemicals, for example from dyes, into the environment.

When they have been found in environmental samples, natural textile fibers are often present in comparable concentrations than their plastic alternatives. Yet, very little is known of their environmental impact. Therefore, until they do biodegrade, natural fibers will present the same physical threat as plastic fibers. And, unlike plastic fibers, the interactions between natural fibers and common chemical pollutants and pathogens are not fully understood.

Fashion’s environmental footprint

It is within this scientific context that fashion’s marketing of alternative fiber use is problematic. However well-intentioned, moves to find alternatives to plastic fibers pose real risks of exacerbating the unknown environmental impacts of non-plastic particles. To assert that all these problems can be resolved by buying “natural” simplifies the environmental crisis we face. To promote different fiber use without fully understanding its environmental ramifications suggests a disingenuous engagement with environmental action. 

It incites “superficial green” purchasing that exploits a culture of plastic anxiety. Their message is clear: buy differently, buy “better,” but do not stop buying. Yet, the “better” and “alternative” fashion products are not without complex social and environmental injustices. Cotton, for example, is widely grown in countries with little legislation protecting the environment and human health.

The drying up of the Aral Sea in central Asia, formally the fourth largest lake in the world, is associated with the irrigation of cotton fields that dry up the rivers that feed it. This has decimated biodiversity and devastated the region’s fishing industry. The processing of natural fibers into garments is also a major source of chemical pollution, where factory wastewaters are discharged into freshwater systems, often with little or no treatment.

Organic cotton and Woolmark wool are perhaps the most well-known natural fabrics being used. Their certified fibers represent a welcomed material change, introducing to the marketplace new fibers that have codified, improved production standards. However, they still contribute fibrous particles into the environment over their lifetime.

More generally, fashion’s systemic low pay, deadly working conditions, and extreme environmental degradation demonstrate that too often our affordable fashion purchases come at a higher price to somebody and somewhere. 

Slow down fast fashion

It is clear then that a radical change to our purchasing habits is required to address fashion’s environmental crisis. A crisis that is not defined by plastic pollution, alone. We must reassess and change our attitudes towards our clothing and reform the whole lifecycle of our garments. This means making differently, buying less and buying secondhand. It also means owning for longer, repurposing, remaking and mending.

Fashion’s role in the plastic pollution problem has contributed to emotive headlines, in which purchasing plastic-fibred clothing has become highly moralized. In buying plastic-fibred garments, consumers are framed complicit in poisoning the oceans and food supply. These limited discourses shift accountability onto the consumer to “buy natural”. However, they do little to equally challenge the environmental and social ills of these natural fibers and the retailers’ responsibilities to them.

The increased availability of these “natural” fashion products therefore fails to fundamentally challenge the industry’s most polluting logic – fast, continual consumption and speedy routine discard. This only entrenches a purchasable, commodified form of environmental action – “buying natural.” It stops the more fundamental reassessment of fast fashion’s “business as usual,” that we must slow.

Thomas Stanton is a PhD researcher in the Geography and Department of Chemical and Environmental Engineering at the University of Nottingham. Kieran Phelan is a PhD Researcher in Economic Geography at the University of Nottingham.