trade dress

Primary Importance of Secondary Meaning in Securing Powerful Trade Dress Protection

Two recent cases provide important insights in maximizing the chances of gaining trade dress protection.

Designs are a crucial element to fashion – a design that stands out from the crowd can both make a fashion statement and drive demand.  But a successful design is often quickly followed by copying and knockoffs that can dilute and even destroy the success of what was a fashion icon. 

Fashion companies look to intellectual property law to protect their designs.  Among the available legal protections is trade dress – where the design itself functions as a trademark, distinguishing the product as emanating from one designer or fashion house. 

While trade dress can be a powerful form of legal protection, it has rigorous legal requirements, and a company seeking such protection needs to exploit a smart strategy to gain and maintain such protection. 

One case, involving a unique design for bikinis, emphasizes the importance of the power of social media to generate recognition, and the importance of maintaining good records of such recognition.The other case, involving handbag designs, shows the importance of both survey evidence and maintaining exclusivity – controlling third party uses of the same or similar designs

Getting into Trouble Again for Copying, Balenciaga This Time Gets Sued by a Car Freshener Company

Fashion companies depend on new designs and ideas to differentiate them from their competitors.  But allowing designers free creative rein without vetting the new designs for legal issues can get a company in trouble.  A recent case illustrates the point well.

We recently blogged about a copyright infringement suit by a New York souvenir company against Balenciaga for copying its designs.  Balenciaga has now gotten in trouble again – this time for copying the well-known design of a commonly used car freshener (shaped like a pine tree and usually hung from the rearview mirror). 

Although these items are far from being luxury items – a package of three sells for $3 at Target – their design is well known.  This is now the second time that Balenciaga has been sued (in New York’s Southern District court) for misappropriation of the design of an inexpensive product for use as a luxury product, in this case, a $275 key chain.

Two Second Circuit Decisions Emphasize Importance of Clear Articulation of Trade Dress Elements

Two recent Second Circuit decisions, International Leisure Products v. Funboy LLC (2018) and Eliya Inc. v. Steve Madden (2018) both upheld dismissal of complaints involving trade dress claims, because the complaints failed to include a clear and enforceable definition of the claimed rights.  Even though they included pictures, and one of them even contained an extensive, seven paragraph list of elements, neither were sufficient to state a claim.

 Trade dress can be a very powerful (and long-lasting) form of IP protection, but it also has many court-imposed requirements, because courts are wary of allowing what could be an anti-competitive weapon. 

 One such requirement is that the putative trade dress owner clearly articulate the elements of what makes its claimed “dress” distinctive from other competitive goods.  This clear articulation allows courts to judge whether the claimed trade dress is functional, whether an accused item is infringing and to formulate an injunction against an infringing defendant.

 In any IP program, foundational work – securing the IP right – is crucial.  The takeaway is that a central part of foundational work is creation of a clear and distinctive list of elements that will pass court muster.  The qualification of the list has to satisfy several legal requirements (distinctiveness, non-functionality, clear warning to competitors). 

 

Steve Madden Handbag Design Dispute Highlights Requirements and Limits of Different Forms of Intellectual Property

A recent lawsuit brought by Steve Madden against Cult Gaia concerning copying of a handbag design highlights the requirements and limits of different forms of intellectual property. 

While neither company is in the luxury goods space, the legal issues at the base of the suit are the same and important for luxury goods companies to consider.

The Dispute

Last summer, Cult Gaia introduced what became a hot item, a bamboo “Ark Bag,” which was heavily promoted on Instagram and other social media.  Shortly thereafter Steve Madden began marketing a very similar design bag.

Cult Gaia’s lawyers cried foul over the alleged copying, and threatened legal action.  Deciding to take matters in its own hands Steve Madden filed an action in federal court, seeking a declaration that Cult Gaia had no rights to infringe. 

Meanwhile, the United States Patent and Trademark Office denied Cult Gaia’s application to register the design as the company’s “trade dress.”  That rejection was in October; Cult Gaia has six months to respond.

A major argument raised by Steve Madden is that the Ark Bag itself closely resembles vintage Japanese bag designs that have been marketed for years. 

How then can Cult Gaia complain of copying when its own work is alleged to be a copy?  That seemingly simple moral argument, however, is not necessarily consistent with the law.

Vuitton Win Against LVL XIII Highlights Fashion Startup Challenges in Protecting Their Designs

Louis Vuitton scored a win against start-up sneaker manufacturer LVL XIII, when a federal appeals court affirmed dismissal of the latter’s trade dress suit against Vuitton.  The case illustrates the difficulty of protecting new designs, particularly for small fashion and luxury goods startups. 

LVL XIII asserted “trade dress” rights in its design of a metal plate at the sneakers’ toe-end – meaning that the design functions as its trademark by identifying the sneakers as it brand.  But such claims require a strong showing of consumer association – that the public identifies the design with a single brand owner.  That takes time and significant investment of resources to promote and market the design.  

As LVL XIII learned to its chagrin, until a high level of consumer association is reached, others are free to copy.  And, the very act of copying by others takes away from exclusivity in the design, which can destroy any chance of reaching the required consumer association.  This can be especially challenging to small design companies.

Design companies need a strategy for protection.  They should consider using additional forms of intellectual property to protect the designs.  These rights include design patents and copyright, neither of which require a showing of consumer recognition.  That then allows time for the company to build up consumer recognition in the design and gain trade dress rights.

Gucci Infringement Case Against Forever 21 Raises Issues About Limits of Trademark Rights

One way of protecting design elements for products is trademark law. Certain signature designs, when associated with a single brand, gain trademark rights, also known as trade dress. But, unlike patents and copyrights, trademark rights have built-in limitations stemming from their purpose: to identify the source of the goods.

Fashion/luxury goods house Gucci is now embroiled in a litigation against Los Angeles based discount retailer Forever 21. Gucci accused Forever 21 of copying its registered trademarks – the Green-Red-Green and Blue-Red-Blue stripe designs (which it calls its “webbing” designs) and incorporating them on cheap knockoff clothing items.

Jumping the gun, Forever 21 filed an action for declaratory judgment of non-infringement and invalidity of the marks; Gucci counterclaimed.

The case well-illustrates that trademark claims, while seemingly simple, often implicate a host of legal issues. Among other things, the Forever 21 court will need to consider:

  • Validity – Does Gucci’s design function as mark? Has it achieved “secondary meaning?” Is there an issue of “functionality?”
  • Infringement – does the public perceive Gucci’s design to be a mark at all? Do point-of-sale circumstances – use of other marks on the Forever 21 website – obviate confusion? Did Forever 21 act in bad faith? Is there “post-sale” confusion?
  • Dilution – Gucci has asserted a “dilution” counterclaim. But federal and California dilution laws have been amended to require a very high level of fame – virtually a household name. Will Gucci be able to prove its stripe designs meet that test?

Trade Dress, Trade Mark Distinction Meaningful Again?

Trademark law recognizes that many things can function as a “symbol of source” and may be protected as a trademark: a word, a design, a package, a product feature.  

In recent years, Congress and the Supreme Court have made it more difficult to protect a subset of these symbols – called “trade dress” – by enacting additional legal hurdles that are not required for “trademarks” in general.  Trade dress for product designs requires a showing of “secondary meaning” -- that the design has achieved commercial recognition as associated with one source.  And, trade dress cannot be “functional” – meaning it gives an advantage in terms of use, cost or competition.

Not surprisingly, some litigants have tried to get around these new hurdles by claiming that what they are trying to protect is merely a “trademark” and not “trade dress.”  The line between the two then becomes important.

As we discuss here, the Patent and Trademark Office and the courts have taken divergent approaches to drawing this line.  The PTO takes a consumer-perception oriented approach, which considers whether consumers would be pre-disposed to viewing the design as a trademark.  Under this test, even portions of designs may be determined to be “trade dress” and face the legal hurdles discussed.

In contrast, the Second and Sixth Circuits have taken a more definitional approach – which limits trade dress to the “overall look” of the product.  Under this test, portions of a design are not treated as trade dress at all.  But as we also discuss, this approach does not appear consistent with Supreme Court treatment of trade dress.