B.A.F.F.L.E.D. Fashion Law

A Potential Way For More Designers To Monopolize Specific Style Characteristics…

By: Attorney India Rios

You want to know why Christian Louboutin is the only shoe designer who can use the color red on the soles of its shoes when the shoe itself is any color but the color red? I can sum it up for you in three words –Trade Dress Protection— a form of United States trademark law. Want to learn more about how Christian Louboutin was able to stop Yves Saint Laurent and any other design from making shoes with red soles unless the entire shoe will be red? First, let me give you a quick trademark law breakdown. 

The purpose of trademark law is to prevent consumer confusion. Labels let consumers know what to expect from a particular brand. Trademarks can be any word, symbol, sound, color, phrase, or combination used to identify and distinguish one source from another and help consumers identify the product in question. 

Trade dress protects the overall commercial look and feel of a product or service. Its range is extensive, and the protection extends to various elements of a product or product packagings such as the shape, design, color, and more. Trade dress takes its security one step further, and it allows trade dress protection for establishments with a distinct look and feel of a product or establishment. Still, like trademark protection, to be eligible for trade dress protection, the design must be distinct and nonfunctional. Essentially, distinct means unlike any others in the market place and nonfunctional as in the design is not required for the product or design to work. 

So now that we have gotten through that trade dress law blitz, let's get back to the questions before us:

(1) How was Louboutin able to stop Laurent and any other designer from making shoes with red soles unless the entire shoe is red?

(2) Why aren’t more designers using trade dress protection to create a monopoly in a specific brand recognizer for their designs?

(3) Is your brand eligible for trade dress protection?

In short, Louboutin’s iconic red sole has built up significant source recognition, which has resulted in the sole qualifying for secondary meaning. Furthermore, the design feature is distinct from amongst the fashion house's competitors. When people see a shoe with a red sole, they almost instinctively think that Christian Louboutin made the shoe. The soles, therefore, help the designer distinguish itself from its competitors. Trade dress protection at its core is about distinctiveness and source recognition. 

In the groundbreaking lawsuit between Louboutin and Laurent, Laurent wins the battle, but Louboutin won the war. The court ultimately determined that Louboutin was entitled to trade dress protection for their signature red soles. Yet YSL was allowed to make shoes with red soles as long as the entire shoe is red. The court further found that the Louboutin's trade dress, consisting of a red, lacquered outsole on a high fashion woman's shoe, has acquired limited "secondary meaning" as a distinctive symbol that identifies the Louboutin brand. Secondary meaning is the key to trade dress protection. Secondary meaning is a legal term of art that represents a designation given to trade dress that by itself is not necessarily inherently distinctive. However, the general consumer of that product has grown to associate that symbol with the brand its self. One generally does not acquire secondary meaning overnight. 

To take advantage of trade dress protection, a designer would need to (1) identify its signature designs and colors and (2) use the designs and colors in a manner that makes the designer's brand distinguishable from others similarly situated in the marketplace. The best way for a designer to posture their brand for trade dress protection is to implement these design characteristics early on in its lifetime. Building brand recognition is a slow grind, and the road to trade dress protection is a long road. The length of the process leaves many designers vulnerable to design pirates.  

Ultimately, whether your designs are eligible for trade dress protection will depend on whether your designs have source-identifying characteristics. Acquiring trade dress protection can be a long process, and the protection offered can be minimal. For example, in Louboutin, the court found that the red sole alone was protectable when the shoe itself was not all red. To obtain trade dress protection for your designs, one would have to wait until you have acquired secondary meaning. Additionally, you will need to use other forms of intellectual property protection for the design parts that trade dress protection will not protect. The narrow protection trade dress protection provides, paired with the cost and amount of time it takes to obtain trade dress protection, make it an unattractive choice for many designers. 

B.A.F.F.L.E.D Fashion Law

Saved By The Trinkets

Hello loves,

Are any of you an aspiring luxury handbag designer? Recently, I had to do some extensive research on, how a designer goes about acquiring protection for their original designs. As many of you may already know, you are not able to gain protection for any feature of your design that is “functional”. Function, meaning that in order to make the object what it is, certain aspects are needed. An example of a functional aspect is the standard buttons on a coat. However, if a designer goes as far as to 1) create a sculptured button that is an original idea, 2) that can stand alone as a piece of art if separated from the coat; those decorative/ornamental, buttons can be gain copyright protection.

How does this apply to handbags? Before law school I often wondered how despicable individuals, were able to take a handbag and create look alike knockoffs. Well, know that I am completely judging anyone who would take someone else’s idea and try to pass it off as their own. Even in the fashion industry this is still considered stealing!

First, if you are a designer of handbags, you are able to copyright and or trademark all parts of your handbag that is NOT functional, but conveys information. Therefore, all elaborate designs that are your original creation such as graphics, embroidery, unique designs in fabric and very unique jacquard weaving, can be federally protected.  Brand logos are protectable, too, 

Second, high end handbags have trinkets on them that are removable. If you take a closer look, these trinkets usually resemble the designer’s federally protected trademark in a three dimensional form. Some bags also have a silk lining that reflect the designer’s trademark.

As a designer, you have a right for your customer to not be confused as to the source and quality of their merchandise. Therefore, although someone can disrespectfully create a look alike of your work, they are not able to use an exact replica of your original designs without your permission. If you successfully obtain federal protection of your marks, and or graphics design, you are on your way to gaining notoriety in the fashion industry. Notoriety is your trade dress, which is the image are you recognized by and the way it is displayed in the market.

Third, get to work. Go forth and be creative. Put your designs out for the public to purchase.

Until next time…

SPOT THE FAKE...