Want to Protect Trademarks? Be Like Top Clothing Designers

Some original or current famous clothing designers are household names — including Ralph Lauren, Calvin Klein, Tommy Hilfiger and Liz Claiborne. What has allowed them to maintain control over their names, logos and clothing lines? It is often the registration of their trademarks.

But when it comes to clothing, exactly what can and cannot be trademarked is not always a simple matter.

While trademark law generally protects a designer’s logo, there is less protection for clothing designs. It is not unusual for one manufacturer to copy the style of another in its designs — or incorporate some of its features. For example, you might manufacture a green sweater that zips up the front with your trademarked logo on the front. It would be unlikely that you could legally prevent other businesses from making green zip-up sweaters but you could fight them for using your logo.

 

Burberry has successfully fought other clothing manufacturers from using its signature plaid because consumers associate it with the company’s products, such as scarves. But that doesn’t mean that other manufacturers cannot make any type of plaid scarves.

This article explains the basics of trademark law, along with some cases to illustrate how designers seek to safeguard their brands.

Trademark Your Name and Logo

A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to:

• Identify and distinguish the goods/services of one seller or provider from those of others; and
• Indicate the source of the goods/services.

Although federal registration of a mark is not mandatory, it has several advantages, including:

• Notice to the public of the registrant’s claim of ownership of the mark;
• Legal presumption of ownership nationwide; and
• Exclusive right to use the mark on or in connection with the goods and services listed in the registration.

In addition to trademark protection in clothing, there may also be copyright protected.

Example: What Does Ralph Lauren Have Trademarked?

Let’s take a look at Ralph Lauren, one of the most famous and popular designers with upscale products including clothing for men, women and children, fragrances, footwear, accessories and home goods. Although this list may not be totally inclusive, a basic search on the Patent and Trademark website shows that there are more than 100 records of trademarks affiliated with the name “Ralph Lauren,” a fashion and design business founded in 1967. Some examples of the lines that require exclusive trademark protection are:

• Footwear, Shirts, and Sweaters (word mark: RL);
• Belts; Blouses; Coats; Dresses; Hats; Jackets; Pants; Scarves; Shirts; Shorts; Skirts; T-shirts; Tops (word mark: DENIM & SUPPLY RALPH LAUREN); and
• Clothing, namely, knit shirts, polo shirts, sweaters, shirts, t-shirts, hats, swimwear, pants, jackets, belts, ties, footwear, socks; outerwear, namely, coats, sport coats, raincoats (word mark: POLO RALPH LAUREN with the famous and well-known design element of the single polo player).

Ralph Lauren Battles Magazine Publisher and Polo Association

As you can imagine, top designers like Ralph Lauren attempt to trademark their famous names and logos among all their product lines. However, there are some limits. There is the well-known court case that trademark aficionados are familiar with involving Polo Ralph Lauren and a magazine publisher.

Facts of the case:  Polo Ralph Lauren (PRL) filed suit to prevent Westchester Media from titling a magazine “POLO” “even though PRL itself sells no literary products,” according to court documents. Westchester was a magazine publisher that purchased a Polo magazine from another publisher and relaunched it in 1997.

Westchester argued that its use of the title “POLO” for its magazine about “equestrian sports and lifestyles” does not infringe PRL’s Polo” mark. PRL asserted counterclaims for trademark infringement, dilution and unfair competition under the federal Lanham Act and state law, and sought injunctive relief.

“PRL contends that as a result of its thirty years of continuous and extensive use of the Polo Trademarks, these marks have become famous, and the word POLO has come to be closely identified with both Ralph Lauren and PRL,” according to court documents.

In relaunching its POLO magazine, Westchester “changed its target audience and distribution methods,” according to court documents. For example, it carried the tagline “Adventure Elegance Sport” and sent promotional materials to the customer list from Neiman Marcus stores. The New POLO magazine covered “affluent lifestyles, fashion and travel rather than the sport of polo,” the court stated.

“The New POLO Magazine, with its emphasis on fashion, elegance, and affluent lifestyles, appeals to the same markets in which PRL has a widespread identity,” the court added. “

These and other facts led the court to find that there was a likelihood that consumers would believe that PRL is associated with New POLO Magazine. Westchester Media appealed and the magazine stopped publishing for a while.

After further legal wrangling, the magazine came back with a disclaimer that reads it is “not affiliated with Polo Ralph Lauren,” which put the issue to rest. (Westchester Media Co. v. PRL USA Holdings, Inc., 214 F.3d 658, 5th Cir. 2000)

Another more recent example involves the United States Polo Association (USPA) battling Polo Ralph Lauren.

Facts of the case: The USPA was established in 1890 as a governing body for the sport of polo. Ralph Lauren’s company PRL USA Holdings Inc. makes popular clothes and other items, which features a single polo player on many of its products. Lauren launched his company in the 1960s.

A federal judge ruled that the USPA cannot use its Double Horseman trademark and the word “polo” on fragrances. The ruling is the latest round between the two parties.

In 2005, a jury found the USPA’s trademark of two polo players did not violate the trademark rights of Polo Ralph Lauren when used on clothing, leather goods, jewellery, watches, and other products.

The two parties headed back to court after the USPA introduced a men’s fragrance line in 2009. Polo Ralph Lauren has sold fragrances for more than 30 years with a polo player and the word “POLO” on the bottles.

The USPA argued that Polo Ralph Lauren was “attempting to monopolize the depiction of the sport of polo.” In May of 2011, a federal judge disagreed and ruled that the association’s fragrances infringe on PRL’s trademark rights.

The court found the similarity in the two marks substantially increases the likelihood of consumer confusion.

PRL does not “have the right to take action with respect to the use of any equestrian figure or the word ‘polo,'” the judge states. But, he added, there “are countless ways in which the sport of polo can be depicted without infringing” on PRL’s marks. (U.S. Polo Ass’n v. PRL USA Holdings, No. 09-9476, U.S. Dist. Ct. S.D.N.Y.)

As you can see, famous designers such as Ralph Lauren will litigate to protect their interests and trademarked products — even when they don’t manufacture the exact same type of product.

Trade Dress: Distinctive but Not Functional

Protecting your product can also involve the broad concept of trade dress. Trade dress is defined as the total image and overall appearance of a product. You might call it a product’s personality. Under the Lanham Act, a product’s trade dress is eligible for protection if it is distinctive and identifiable from products offered by other parties.

Trade dress must be distinctive. Consumers perceive a particular trade dress as identifying the source of a product. Here are some elements that might be involved:

• Shape;
• Design;
• Colours or colour combinations;
• Materials; and
• Graphics.

However, a trade dress must not be functional. That is, the configuration of shapes, designs, colours, or materials that make up the trade dress in question must not serve a utility or function outside of creating recognition in the consumer’s mind. What is considered “functional” depends upon the specific product or item an owner is seeking to protect.

Sometimes even if a trade dress is not considered functional, there could be a dispute as to whether the trade dress is distinctive. For example, in one lawsuit, Christian Louboutin S.A. argued that the red outsoles of its high-end shoes are distinctive. Since 1992, Louboutin “began colouring glossy vivid red on the outsoles of his high fashion women’s shoes,” according to court documents.

The lawsuit stated the U.S. Patent and Trademark Office awarded Louboutin a trademark for the red soles in 2008.

However, you may wonder: Can someone “own” a colour? That was the position of Yves Saint Laurent America, Inc. (YSL), which has several models of shoes with the same or a similar shade of red on the soles. YSL argued that it sold shoes with red outsoles long before Louboutin.

Louboutin sought to prevent YSL from selling red-soled shoes, but the U.S. District Court (S.D.NY) denied the motion. Louboutin appealed, stating that the competitors’ shoes “threaten to mislead the public.” On appeal, the court held that Louboutin can claim trademark protection for outer red soles on shoes — but not if the shoes are entirely red. That means that YSL can continue to sell all-red shoes, including red insoles, heels, uppers, and outsoles. (Christian Louboutin v. Yves Saint Laurent Am. Holding, Inc., U.S. Court of Appeals for the 2nd Cir., 11-3303-cv, 9/5/12)

Unique Issues

As you can see, exactly what can and cannot be trademarked can be a tricky question. Clothing businesses have unique intellectual property issues, which is also the case in some other industries. Speak with your attorney about these issues. If you own a company with products and services, or if you are starting a business, make sure you know what to trademark — and what the ramifications are if you don’t seek protection.