Patent protection is an important, and often overlooked, strategy for companies to consider.
Trademark and copyright protections are frequently used by apparel designers, but they apply only to limited areas of intellectual property. For some product categories, particularly accessories, patent registrations can be an unexplored avenue of defense against knockoffs and counterfeits, according to Robert Katz, partner at Banner & Witcoff, a national law firm that specializes in intellectual property.
“Traditionally, fashion-related products are particularly susceptible to being copied. Therefore, appropriate consideration of new products for design patent protection should routinely be given,” he said. Typically, utility patents are directed to protecting functional innovations and design patents protect the ornamental appearance of items, Katz said.
The protections offered by both types of patents exclude others from making, using, selling, importing and offering to sell infringing products, but the terms of protection are different, he said.
Utility patents can be enforced from the date they are granted and expire 20 years from their date of filing. Design patents, however, have a term of 14 years from their date of issue. That is about to change in the U.S. The term of protection for a design patent will increase to 15 years soon in accordance with an international treaty.
When applicable, design patents are typically one of the strongest forms of protection for products that are purchased partly for what they look like, Katz said.
When considering a design patent, application companies should look at a product’s fabric patterns or other surface ornamentation, its shape (including layouts and overlays of panels and sections), and combinations of its surface ornamentation and its shape. In some cases more things beyond just the primary article could also be eligible for protection. This would include product packaging, storefronts, store interiors, affiliated products and Web pages, which are all potentially eligible, Katz said.
“In the fashion industry, commercially successful products are routinely knocked off. Any company that does not procure design protection on its commercial goods likely gives up the right to stop competitors from making and selling knockoffs of their products. This commonly results in the original designs having to compete in the marketplace with the knockoffs,” Katz said.
Trademark laws can be used to prevent knockoffs, but they have limitations. Trademark protection only covers the trademarks a company uses to identify its goods and not what the items look like or how they are manufactured. For example, under the law, a handbag that is identical to that of a well-known brand is only a counterfeit or knockoff if it bears a fake trademark. The identical bag under another name or without any trademark is not considered illegal.
“The creators of new designs should look to maximize protection under the design patent laws, but should also give proper consideration to maximize protection under the trademark laws,” Katz said.