Trade dress is an extension of trademark law that has become quite popular in the fashion industry. Fendi, Hermès, Christian Louboutin, and Tiffany & Co. are merely a few famous companies that have utilized trade dress law to protect designs used in connection with their products. While trade dress provides a means to protect the look and feel of a product, it can be challenging to prove trade dress rights attach to products. In Christian Louboutin v. Yves Saint Laurent, one of the most well-known cases in fashion law, the court found that although the red soles of Louboutin’s shoes had acquired secondary meaning with consumers (or inherent distinctiveness), Louboutin did not have a monopoly on ALL shoes with red soles. As Yves Saint Laurent’s shoes were entirely red including the sole, the court ruled that Louboutin was entitled to its trademark on red soles, but the trademark rights did not extend to instances where the entire shoe is red.

Some fashion companies have been perhaps more successful in asserting trade rights in non-functional aspects of their products, resulting in recovery of money damages as well as some injunctive relief. For example, in 2014, Converse filed 22 separate lawsuits against 31 retailers and manufacturers including Skechers, Wal-Mart, and H&M in the U.S. District Court for the Eastern District of New York for alleged trademark infringement, false designation of origin, unfair competition, and trademark dilution based on Converse’s trademark registrations related to the Chuck Taylor All-Star shoe and a complaint seeking secondary meaning protection from the International Trade Commission (ITC). Earlier this year, the ITC agreed regarding several of the 31 retailers’ products, and many companies reached settlement agreements with Converse. The ITC, however, found that some of the alleged shoe designs were unlikely to be confused with Converse’s trademark registration directed to the Chuck Taylor All-Star shoe. Ultimately, by filing 22 lawsuits alleging its trade dress rights were violated, Converse was able to prevent competitors from potentially earning profits that would otherwise go to Converse.

But not all cases related to trade dress in the fashion industry result in a win for the alleged trade dress holder. One defense to trade dress infringement is the parody defense. Recently, Louis Vuitton filed suit alleging that My Other Bag infringed its trademark associated with one its handbag designs. My Other Bag relied on the parody defense, and the court found in My Other Bag’s favor, citing a line from Tommy Hilfiger Licensing v. Nature Labs regarding parody perfumes, “[i]n some cases, however, it is better to ‘accept the implied compliment in [a] parody’ and to smile or laugh than it is to sue.” Given the ruling, My Other Bag will still walk the runway with handbags bearing statements, such as, “My Other Bag is Louis Vuitton.”

Even bridal wear designers are now using trade dress rights. In April 2016, a bridal designer, Jenny Yoo, filed suit against David’s Bridal alleging her trade dress rights for a convertible bridesmaid dress were violated. The outcome of this lawsuit will likely rest on whether secondary meaning exists in Yoo’s dress design. Some of the factors that the court may consider to determine whether secondary meaning exists include at least consumer perception, advertisement, demonstrated utility, extent of use, exclusivity, copying, and actual confusion.

While trade dress rights have been available to the fashion industry for years, the number of fashion companies taking advantage of this area of trademark law is on the rise. From using trade dress rights as a tool to prevent competitors from “stealing” profits to stopping counterfeiters in their tracks, trade dress is sure to be found striking a pose and walking the runway for years to come.

Sources: http://www.thefashionlaw.com/home/bridal-designer-jenny-yoo-files-trade-dress-patent-suit-against-davids-bridal?rq=trade%20dress http://www3.ce9.uscourts.gov/jury-instructions/node/238 http://www.itcblog.com/c

For more information on the difference between design patents and trade dress, click here.

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For more information on this topic, please visit our Trade Dress service page, which is part of our Trademark practice.

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX. The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights. The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. Additional information about the trade dress protection firm and its trade dress attorneys may be found at www.klemchuk.com.

Klemchuk LLP hosts Culture Counts, a blog devoted to the discussion of law firm culture and corporate core values with frequent topics about positive work environment, conscious capitalism, entrepreneurial management, positive workplace culture, workplace productivity, and corporate core values.

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