For those with a clothing, shoe, handbag or other accessory line who wish to protect the brand, there are several methods of IP protection.
Trademarks for Fashion and Accessories
One method is protecting the name of your fashion brand through trademark protection. Trademarks generally consist of a word, phrase, symbol or image used to identify the source of the item. Both brand names as well as logos may be trademarked as long as used as a source identifier for the brand. Many high end fashion designers, such as Gucci, Louis Vuitton, Christian Dior and Christian Louboutin, tend to have multiple marks covering various iterations of their brand. For example, Gucci owns multiple registered trademarks covering the word GUCCI for various items. They also own marks for GG, symbolic of their interlocking “G” letters on various articles. Similarly, Louis Vuitton owns marks for the words LOUIS VUITTON. They also own marks for the letters “LV” in various iterations as shown below:
Color Trademarks for Accessories
A unique way to obtain brand protection is protecting a color used as a source identifier. Christian Louboutin famously protected his signature red soled shoes with a trademark. While such protection is normally difficult to obtain, a sufficient showing of secondary meaning can allow a color mark to register. Such secondary meaning includes where consumers identify a particular color as a source identifier for your brand. Here, the women purchasing Louboutin shoes are highly discerning consumers. These consumers immediately recognize the red soles as emanating from Christian Louboutin.
Louboutin litigated the validity of his color mark in several countries, notably against Yves St. Laurent in the U.S. back in 2012. The Court of Appeals overturned a District Court decision. The Appeals Court found the red sole was neither utilitarian in function nor aesthetically functional. However, the Court did limit the trademark to those shoes in which the shoe upper contrasts in color with the red sole.
Copyrights for Surface Decorations
With regard to fashion designs themselves, if the design of a useful article incorporates pictorial, graphic, or sculptural features that can be identified separately from, and can exist independently of, the utilitarian aspects of the article, these design features can be copyrightable. 17 U.S.C. §101.
Back in 2017, the Supreme Court further clarified how to implement §101 with regard to clothing designs in Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017). The Court promulgated a two part test to determine if a design of a useful article is capable of copyright protection.
In step 1, the feature must be examined to ascertain if it “can be perceived as a two- or three-dimensional work of art separate from the useful article”. In step 2, the feature must be examined to ascertain if it “would qualify as a protectable pictorial, graphic, or sculptural work – either on its own or fixed in some other tangible medium of expression – if it were imagined separately from the useful article into which it is incorporated”. If the answer to both steps is yes, then the design is eligible for copyright protection. The designs in question in this case shown below:
The Court ruled that the surface decorations on the cheerleading uniforms were subject to copyright protections independent from the useful article. The Court made it clear the shape, cut and dimensions of the actual cheerleading uniform were not copyrightable.
Design Patents for Fashion and Accessories
As detailed above, patterns on fabric and designs on clothing can be protected by copyright. Design patents protect the actual shape and cut of an article of clothing if purely ornamental. A design patent lasts for 15 years from issuance. Design patents normally used to protect ornamental designs of shoes and handbags. An example of a handbag design owned by Jimmy Choo Ltd. and protected by design patent US D559,543 shown below:
In the image, solid lines delineate claimed elements. Broken lines represent features not part of the design.
For clothing, in order to qualify for a design patent, the clothing item must be new and unique; not affect the functionality of the article of clothing; and not published or publicly disclosed more than 1 year prior to filing. An example of a figure from a design patent for a dress owned by Stella McCartney Limited (US D674,993) shown below.
Similar to the image of the handbag above, solid lines delineate claimed elements of the clothing item. Broken lines represent features that are not part of the design claim.
One caveat with design applications is only a single design is covered in the U.S. unless the variations exhibit only very minor differences. In cases where multiple design embodiments are present in the application, the Patent Office will likely restrict the application to one single design. It may be possible to obtain two or more design patents having differing coverage for a clothing design.
Takeaway
In conclusion, the U.S. offers designers multiple avenues for protecting their creations. Trademarks protect the brand name as well as any logos or symbols associated with the brand. Color trademarks protect a signature color of a brand only if shown that consumers identify that color with the source/brand.
Fabric designs and surface decorations may be protectable under copyright law. For copyright law to apply, the design must be perceived as a work of art separate from the utilitarian aspect of the clothing article. Further, the design must qualify as a protectable work if imagined separately from the useful article incorporating it.
Design patents protect novel and unique designs. Design patents generally protect ornamental shoe and handbag designs, but also protect ornamental clothing designs.
