With the foregoing in mind, fashion designers
should consult with legal counsel and consider all areas of intellectual
property law in order to maximize protection for their fashion designs. Below
are some suggestions:
1. At a minimum, designers should file for
a copyright registration for any original prints and patterns, and consider filing
for a copyright registration for any design elements that can be physically or
conceptually separated from the functional aspects of the designer’s apparel
2. If the fashion design is expected to
last beyond a season and can be considered an ornamental, novel and non-obvious
design, then the designer should also consider applying for a design patent.
3. Designers should also consult with
legal counsel to consider whether their fashion designs, or any of the
individual elements that make up their design, are non-functional and have
sufficient acquired distinctiveness to merit trademark protection and
registration as a trade dress.
4. Further, while most designers and
brands have taken the basic step to register their names and logos as trademarks,
many overlook recording their trademark registrations with the Registrar
5. Designers should also consider creative
ways to stop infringements, including seeking to freeze the infringer’s assets
and bringing third-party liability actions that target landlords and flea
market owners that house counterfeit and infringing products. Fashion designers
can also go after internet service providers and payment processing companies
that enable online purchases of counterfeit and infringing goods.
However, fashion designers must also recognize
that not all replicas are actionable. While counterfeits sold on the
streets of New York or online bearing a designer’s brand name or logo are
clearly actionable, replicas sold by “fast fashion” retailers like Zara, Forever 21 and Urban Outfitters sometimes are
not. These retailers will likely consult with legal counsel to determine
whether their designs, which are often inspired by runway fashions, are
sufficiently different to avoid liability, and whether the design elements they
have borrowed from the runway are even protected under law.