The fashion industry is a multi-billion dollar business both in this country and abroad. The Commerce Department announced that total fashion retail sales for the year reached $426.6 billion by August 2013. With such high economic gains at stake it is no surprise that fashion designers, both emerging and established, are looking for increased protection of their designs. As discussed earlier this month by Kathryn Dachille, the Copyright Act does not provide designers with many rights (see Fashion Weak: Copyright’s Lack of Protection for Fashion Designs)
Compared to the United States, the European Union provides much broader protection for original apparel designs. For example, in 2002, the E.U. passed a law that provides designers with up to three years of unregistered design protection and up to 25 years of registered protection. Contrast this with the law in the United States, which lacks any law that specifically targets fashion design protection. To bridge the gap between the lack of significant intellectual property protection and the need for such safeguards designers are increasingly turning to design patents to secure their rights.
The Patent Act provides the legal basis for design patent protection in the United States. Anyone who invents a new or original ornamental design for a commercial article is entitled to patent protection subject to the terms and conditions of the Patent Act. Unlike utility patents, design patents protect the “look” of an object, not its function. Typically design patents are granted within a year and their protection lasts for 14 years .
There are many advantages to seeking a design patent.
Lack of adequate alternatives
Many fashion designs do not fall into the traditional realm of copyright and trademark protection. Copyright protection is only available to protect specific parts of a garment or accessory such as the pattern or print of a textile but it does not cover the entire design of the item. Moreover, the Copyright Act clearly states that “designs are not subject to copyright protection… ” The fashion design does not receive copyright protection if it is “embodied in a useful article that was made public by the designer or owner in the United States or a foreign country more than 3 months before the date or the application for registration” under the Act.
With the Copyright Act providing such little protection, most designers use trademark to protect some aspects of their work. Trademark protection is limited to a recognizable logo or mark. Thus, if a designer chooses not to have a visible logo on a design then that design would not be protected under the trademark laws.
Attempts at passing legislation that is more designer-friendly have so far failed. The Design Piracy Prohibition Act never made it out of the U.S. House Subcommittee on Courts, the Internet, and Intellectual Property. Likewise the Innovative Design Protection and Piracy Prevention act of 2012 is still languishing in the House Subcommittee, unlikely to ever see the light of day.
Thus, in the current intellectual property regime, design patents provide an attractive option for those who seek to get protection for the overall look of an object that would otherwise not be protected by copyright or trademark law.
Design patents are much easier to obtain than utility patents. The USPTO generally grants design patents within a year of the application date. By contrast, a utility patent can take up to several years to be granted. This provides a great advantage to the fast-moving pace of the fashion industry.
In the high-stakes world of fashion it is also very important for designers to keep their designs under wraps until the big reveal at the major fashion shows. Design patents are not published until they are granted which means that designers are safeguarded from knockoffs both before and after the patent is granted. Even if a designer chooses to put their product on the market before the patent is granted, the “Patent Pending” warning also deters potential counterfeiters.
Great for emerging designers
Design patents are also a boon for those who are just starting to get their footing in the fashion industry. Unlike big name designers, which are more likely to be protected by trademark law because of their famous brands (Gucci, Prada, Louis Vuitton) that have acquired distinctiveness (see Walmart v. Samara Brothers 529 US 205 ), emerging designers do not yet benefit from the name recognition. By obtaining a design patent, an emerging designer is assured protection of design elements for 14 years. This is important to those who are trying to establish a brand by using the same elements in their designs in recurring collections.
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About Alis Anita Manaila – Alis.NYC@gmail.com
Alis Anita Manaila earned her J.D. from St. John’s University Law School and her LL.M. in Intellectual Property From Benjamin Cardozo Law School. She also earned a B.A. in Chemistry from New York University. Alis is interested in all matters of Intellectual Property law, but she especially goes crazy over anything related to patent law and science.
Another great thing about design patents is that the major on-line retailers respect them. If you see a knockoff on Amazon, eBay or even the Chinese site Alibaba and send them a copy of your design patent, they will take the knockoff down.
I wrote an article on the subject showing out the Kickstarter project Olloclip used design patents to protect against knockoffs. Here is a link: http://bit.ly/designpolice
(author is a registered US patent agent)