Securing broad trade dress protections is an evergreen challenge for fashion brands trying to ward off copycats.

Companies often have to show how their unique designs — shapes, colors, patterns and their placement in the product — have “secondary meaning,” such that they automatically signal the brand’s identity to consumers. For fashion designs, which tend to be seasonal, it may take a lot to show that a particular design has had a lasting enough impact to create an enduring brand association to consumers, attorneys said.    

The Federal Circuit appeals court tackled this question in October, finding in a case involving Converse All Star shoes that the issue of whether a trademark design has secondary meaning, or “acquired distinctiveness,” involves six questions, including customers’ perception of the design, the volume of sales and the size of the product’s audience.

The ruling’s impact has become clearer in recent months as the U.S. Patent and Trademark Office has applied it to evaluate applications, intellectual property attorneys said. In March, the PTO’s Trademark Trial and Appeal Board even applied the Federal Circuit’s Converse test in a case involving fish food, according to TTAB records.

“I think when it comes to product designs, there is a high bar to prove acquired secondary meaning,” said Laura Ganoza, a partner at Foley & Lardner LLP. “Trademark Examiners at the USPTO are using the Converse factors in their secondary-meaning determinations when deciding whether a trade dress should be registered.”

Converse had brought its case in 2014 before the U.S. International Trade Commission, targeting several sneaker brands, including New Balance. Since the Federal Circuit’s ruling in October, the case is back before an administrative law judge in the ITC, who indicated in an order last week that another decision could come down by January 2020.

An attorney for Converse could not immediately be reached for comment Tuesday.

A key question for brands is whether having a federal trademark registration for certain design elements means they can presume those designs have secondary meaning. The Federal Circuit’s answer — that such a presumption would kick in only after the trademark is registered — may have left brands with a complicated choice, said attorneys.  

On one hand, registering early to secure this coveted reassurance that a particular pattern or design indeed announces the brand to consumers, may save brands considerable hassle down the road. Secondary meaning usually takes some consumer research to demonstrate whether the public really associates those designs with its brand. But having to show that such a public perception existed before the trademark was registered could be challenging, since consumer research is generally conducted with a present-day audience.   

“It should encourage, particularly fashion designers, to get to the trademark office stat, to go ahead and register the trade dress,” said Kecia Reynolds, a partner in Pillsbury Winthrop Shaw Pittman LLP’s intellectual property litigation practice. “They need to register that trademark or trade dress as soon as possible.”

At the same time, rushing to register a trade dress without gathering all the proof to prevail before the PTO could backfire, attorneys said. Brands trying to register trade dress on the design elements of their shoes and apparel — what intellectual property law terms “product configuration” — may need that evidence to avoid a rejection.

Trademark officers and courts may now consider factors like how much of the product the brand sold in recent years, how much it spent advertising it and how much unsolicited media coverage the so-called product configuration received.

A PTO rejection isn’t the end of the road, since a court could still override it later. But attorneys said it may undermine the point the brand is trying to make in the first place, that its design unmistakably announces the brand.

“If you apply, and it’s rejected because you haven’t demonstrated ‘acquired distinctiveness,’ then you have a public record of a government body saying on the record that you have not achieved acquired distinctiveness,” said Margarita Wallach, a partner in McCarter & English LLP’s intellectual property practice.

“That may kind of defeat the purpose of trying to have rights that are acknowledged by the government,” she said.  

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