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We often receive questions about how to protect fashion designed. This article explain trade dress in fashion design and the roles it plays to protect certain items.
In the absence of copyright protection for fashion designs in the United States due to the useful nature of designs, designers have turned to protection under trade dress. Trade dress assertions in the fashion industry are difficult because the designer must prove secondary meaning. In Wal-Mart Stores Inc. v. Samara Brothers, Inc., the Supreme Court put to rest the issue of whether a product’s configuration or design can or should be deemed to be inherently distinctive by stating that a product design should never be found to be inherently distinctive. 529 U.S. 205, 214 (2000).
As described in Secondary Meaning of Trade Dress, secondary meaning is defined as “the mental association by a substantial segment of consumers and potential consumers ‘between the alleged mark and a single source of the product.’” Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1985). In other words the consumer must identify the fashion design with the designer. This precludes many emerging designers from asserting protection under trade dress because the designer is likely unrecognizable by consumers and therefore, cannot be associated with a specific design in the minds of consumers because of this lack of recognition.
Whereas trademark protects the mark of a designer in the fashion industry, the trade dress of a design protects the overall physical appearance. For example, the registered trademark of Gucci, a luxury brand originating in Florence, Italy in 1921, is the Green-Red-Green stripe mark. Gucci America, Inc. v. Guess?, Inc., 868 F.Supp.2d 207, 215 (S.D.N.Y. 2012). However, designers, like Marc Jacobs, have filed suit for trade dress infringement to protect the overall physical appearance of their design. According to Professor Susan Scafidi, creator and editor of Counterfeit Chic, Marc Jacobs filed a complaint against Christian Audigier’s Ed Hardy, asserting trade dress infringement when Ed Hardy’s “KOI Jana Nylon Tote” copied the dimensions and overall appearance of the Marc by Marc Jacobs “Pretty Nylon Little Tate.” Marc Jacobs alleged copying of its quilted pattern, knotted handles, vertical side pockets, metal plaque, and other details. Images of the two handbags can be viewed here.
Another more recent example of trade dress infringement in the fashion industry involves Hermès, a French luxury goods manufacturer of highly coveted handbags, and defendants, Emperia, Inc.; Anne-Sophie, Inc.; and Top’s Handbag, Inc., who allegedly copied the overall appearance of Hermès’ Birkin bag. According to the United States Patent and Trademark Office (hereinafter USPTO), Hermès has a one registered trademark on the “the configuration of a handbag, having rectangular sides, a rectangular bottom, and a dimpled triangular profile” and another registered trademark on the “rectangular straps, which fit over the flap of the handbag, and whose ends are joined with rectangular hardware which includes a turn-lock and a padlock.” Following a settlement agreement, the parties jointly stipulated to entry of Permanent Injunction and Voluntary Dismissal on July 31, 2014.
While precedent has been hard to come by when making assertions of trade dress protection in the fashion industry, courts are more widely recognizing this form of protection.
For more information about the secondary meaning of trade dress, contact Revision Legal’s trademark attorneys through the form on this page or call (855) 473-8474.
Unlike most creative works, fashion designs receive no copyright protection in the United States because clothing is considered a “useful article” — an item with an intrinsic utilitarian function beyond conveying authorship. Under 17 U.S.C. Section 101, a useful article’s design is protectable only to the extent that pictorial, graphic, or sculptural features can be identified separately from, and are capable of existing independently of, the article’s utilitarian aspects. The Supreme Court addressed this standard in Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017), holding that two-dimensional designs on cheerleading uniforms were separable and thus copyrightable — but the shape and cut of the uniform itself was not. This leaves most fashion designs without copyright protection, pushing designers toward trade dress as the principal avenue for protecting the overall look of their products.
Because product design trade dress can never be inherently distinctive under Wal-Mart Stores, Inc. v. Samara Brothers, a fashion designer asserting trade dress protection must prove the design has acquired secondary meaning — that consumers associate the specific design with a single commercial source. Proving secondary meaning in the fashion industry is notoriously difficult, requiring multiple categories of evidence: duration and exclusivity of use; advertising and promotional expenditures that highlight the specific design features; properly constructed consumer survey evidence; press coverage that specifically identifies the design with the designer; and sales volume and commercial success that supports an inference of consumer association.
Several notable cases illustrate both the promise and the limits of trade dress protection in fashion. In Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., 696 F.3d 206 (2d Cir. 2012), the Second Circuit upheld Louboutin’s trade dress in its red lacquered outsole — but only when contrasting with a shoe of a different color. The court found the red sole had acquired secondary meaning through extensive use, advertising, and celebrity association, but refused to extend protection to a monochromatic all-red shoe. This decision demonstrates that even well-established fashion trade dress has precise, judicially-defined limits.
In Gucci America, Inc. v. Guess?, Inc., 868 F. Supp. 2d 207 (S.D.N.Y. 2012), the court found Guess liable for trade dress infringement for mimicking Gucci’s diamond pattern, GG logo pattern, and green-red-green stripe, and awarded $4.7 million in damages. This case underscores that systematic design copying by a mass-market competitor produces significant monetary exposure even when no individual item is identical to the original.
Even where secondary meaning exists, fashion trade dress cannot protect features that are functional. A design element is functional if it is essential to the use or purpose of the article, or if it affects the cost or quality of the article, under the standard from Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850 n.10 (1982). In the fashion context, courts have refused trade dress protection for stitching patterns that improve durability, sole designs that enhance athletic performance, and pocket configurations that serve an ergonomic function. Designers must carefully identify which elements of their design are purely aesthetic and source-identifying before asserting trade dress.
Protecting fashion design through trade dress requires a carefully built evidentiary record, a thorough understanding of the functionality doctrine, and experience litigating before federal courts. Revision Legal’s trademark attorneys counsel fashion brands, emerging designers, and retailers on trade dress strategy, enforcement, and litigation. Contact us to discuss how to protect your brand’s distinctive look from knockoff competitors.
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