Originally posted 2014-03-17 21:36:04.

Sindy Wenjin Ding  |  www.amdlawgroup.com

designerSome people confuse the differences among trademarks, patents and copyrights. It’s fundamental for intellectual property rights owners, especially fashion designers, to figure out the similarities and differences among these kinds of intellectual property protection, and the different purposes each serves. I’ll explain each kind one by one, and then give some observations on how the intellectual property rights entangle with the fashion world.

Trademark – The Goods/Services Source Indicator

According to the Federal Statute, Lanham Act, a trademark is a word, name, symbol, device, or any combination thereof, which is used to distinguish the goods of one person from goods manufactured or sold by others, and to indicate the source of the goods, even if the source is unknown. The term “trademark” is often used to refer to both trademarks and service marks. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods.

A mark can be a scent, sound, color, etc. The US has the broadest trademark protection in the world because regardless of the statutory definitions, if you create value, you’ll be protected from free-riders. With the aid of modern advertising techniques, a trademark owner is able to transform its mark into a symbolic expression of information about the character, price, quality, the general desirability of its products, as well as its own general goodwill, which all consist of the value we are talking about here.

Intellectual Property lawyers always encourage trademark owners to register with the U.S. Patent and Trademark Office because federal registration has several advantages, including a notice to the public of the registrant’s claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration. Having a registerable trademark is the premise of the enforceable protection. According to Restatement of the Law 3d: (82) It used to be that the subject matter of trademark law was limited to fanciful words/ symbols, which are the terms that never existed before so it was invented for sole purpose of obtaining a trademark, such as Verizon, Clorox, Exxon; and arbitrary words/symbols, which are in common usage but unrelated to the product, such as Apple Computer, Amazon.com. Nowadays, the following are all eligible for protection as trademarks: words, numbers, letters, slogans, pictures, symbols, characters, sounds, graphic designs, product and packaging features and other things that are “capable of identifying and distinguishing the goods or services of the user.” No matter what subject matter of trademark you choose to represent your business, distinctiveness is still the primary requirement to examine a trademark compared with other kinds of intellectual property protections because of the nature of a mark — a source indicator.

Patent – Utility Patents for Functional Features While Design Patents for Ornamental Designs

If trademarks are about what a certain product is called and how certain brand look, then patents focus on the mechanisms behind a piece of good or an invention, such as how an iPhone case could charge the phone wireless and simultaneously, or how the circuits configure to heat the car seat, etc. A functional feature is the center of a utility patent. And utility patents are to protect those functional features.

As a trademark, being distinctive can maximize the chance to be protected; similarly, being novel and non-obvious are the two requirements to obtain a patent.[1] That is to say, an invention cannot have been obvious to someone with skills in the invention’s field. In other words, the requirement of being non-obvious is intended to ensure that the invention is an actual advance or step forward, rather than a tweak or simple change to inventions already in existence. In general, the expense of prosecuting a patent, and all the amount of time required obtaining a utility patent make this form of protection a bit impractical compared with trademark procurement and protection.

Another kind of patent could be the fashion designer’s friend, which is design patent. It applies to fashion designs or design elements that are not merely aesthetically pleasing, but are also functional if sufficiently innovative, meet the exacting standards of a patentable invention.[2] Elements like the waistband of the Lulu Lemon Yoga pants[3], the buckle design of Coach bags, the materials of Speedo swimming suits… could all been the subjects of design patents, but they share the same limitations as utility patents: the seasonal nature of fashion. The fast fashion chains, trades, and merchandise change all the time and unless a certain design element will be used in each season of collection, it will be unworthy to spend time and money on the design patent and wait for examinations to be conducted by the patent agent. By the time a fashion designer could obtain a design patent, the item at issue would already be passé.[4]

Copyright – Idea vs. Tangible Expression of the Idea

A copyright protects works of authorship, such as literary, dramatic, musical works; pantomimes & choreography; pictorial, graphic, sculptural work; sound recordings; architectural works that have been tangibly expressed. The whole idea of the copyright protection is the protection for “original works of authorship” against unauthorized copying, distribution, adaption, performance, display or importation. However, the original works without being expressed in a tangible medium could not be protectable. It confuses a lot of copyright owners that merely an idea is not copyrightable unless it’s original and expressed in some tangible ways. The validity standard has its policy base, which is the dissemination nature of copyright, and this policy underlying doctrines is also the rationale behind a lot of court decisions. Works of art, no matter what specific forms, are inherently driven by the incentives to disseminate to other people and the whole society. Simply as, everybody is encouraged to listen to music, read books, watch movies, etc. When copyrights are not monopoly any more, copyright issues start the focus on the specific expressions, a computer chip, a printed page, a cassette or a CD…

Fashion designers may ask, wait, what about fabrics? It consists of original patterns, and is tangible medium! Also, how about the fashion design sketch? The answers are already given in the Copyright Law in the United States. As noted in previous blogs, clothing is not covered in the subject matters of copyright, so are fabrics and fashion designs. Because compared with nonfunctional literary and artistic works, unfortunately, clothing, including fabrics, have utilitarian nature and function – to cover human body and keep warm! There are existed theory and doctrine called conceptual separability that could help fashion designer protect the copyright as the copyrightable part could be conceptually separate from the rest of the design. As 3D printing technology develops, fashion lawyers and legislators are more optimistic about more legal recognition for original clothing and texture design. At the same time, new technology will also challenge the fine line among the copyright, trademark and patent.

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[1] The patentability requires novelty, utility and non-obviousness. 35 U.S.C. §§ 101, 103 (2004)

[2] Susan Scafidi, Intellectual Property and Fashion Design, in 1 Intellectual Property and Information Wealth 115, ed. Peter K. Yu (2006)

[3] Lululemon filed a lawsuit against Calvin Klein, Inc. in 2012, alleging CK infringed the ‘644 Patent, the ‘872 Patent, and the ‘281 Patent that Lululemon invented and owned. The three design patents at issue are a functional waistband that could be used on different kinds of yoga pants.

[4] Susan Scafidi, Intellectual Property and Fashion Design, in 1 Intellectual Property and Information Wealth 124, ed. Peter K. Yu (2006)

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