Last night, we attended a DC Bar fashion law panel discussion, “For the Love of Fashion: Protect Yourself,” at Baker Hostetler in Washington DC. It was a very informative and comprehensive discussion from in-house and outside counsel, including DLA Piper’s Lisa Norton, who is Of Counsel in the Patent Prosecution group, on trademark, copyright, and patent protection as well as current hot-button developments in fashion law and anti-counterfeiting.
From this panel discussion, we gathered four key takeaways:
1. The fashion industry is a trillion dollar business that deserves protection just like any other industry. The more distinctive the brand or product (think, Louis Vuitton or Chanel), the more consumers have to pay for it. Therefore, there is immense value for fashion companies to settle some form of intellectual property protection, whether it is trademark, copyright or patent protection, for their designs.
2. Patents, particularly the design patent, are the most under-utilized mechanism for protection in the fashion industry. A design patent protects the overall aesthetic appearance of a design (i.e., the ornamental aspects or shape of an article), whereas a utility patent protects how an object operates or functions (i.e., the functional/utilitarian features). Unlike utility patents which are costly and very difficult to register, design patents are the easiest and most cost-effective form of protection. However, the primary issue with design patents is, of course, timeliness since fashion is constantly changing and it takes about 6 to 8 months to secure a registration. By that time, the subject design is likely already widely-circulated in commerce and either on the “hot” or “not” list in fashion. In addition, if fashion companies fail to file for a design patent at the outset (i.e., before the subject design is widely-circulated, duplicated and/or knocked-off in the marketplace), they could forfeit their right to obtain a design patent because the design would no longer be considered original.
3. Companies should always remember to run clearance searches on their style and product names. Although the style and product names may not be as important or front-and-center as a trademark per se, a company could be at risk of receiving a nasty-gram from a competitor for using a similar or identical style or product name.
4. Litigation is a quite costly and time-consuming luxury. Therefore, for disputes between competitors, it is sometimes best to amicably settle the matter in lieu of extensive litigation. Designs become obsolete so quickly and, therefore, unless the dispute involves a company’s “bread and butter” fashion item, it may not be worth the time or money to litigate.
As an emerging worldwide leader in fashion law, DLA Piper aims to stay abreast of the latest trends and developments in fashion law to better serve its clients in this very robust and ever-changing industry. For more information about DLA Piper’s fashion law practice, contact Ann Ford or Radiance Harris.