Guest post by Tom Chan, Esq.
The entire fashion community is talking about Lululemon’s recent design patent infringement suit against Calvin Klein, wherein Lululemon claimed Klein violating its rights in its iconic "cross-over waistband."
The recent settlement between Lululemon and Calvin Klein is stirring up renewed interest in design patent protection for apparel brands.
Contrary to common misconceptions, design patents should be an arrow in every fashion designer’s quivers because they are:
· inexpensive to obtain, about $2,000-2,500, including fees and costs, around the cost of a trademark registration.
· easy to get: almost 90% are allowed and around 80% do not even receive an office action,
· often granted in 6-8 months, faster than trademark applications and comparable to copyright applications.
Oh, and the best part? Recently, we have successfully avoided the cost of technical drawings by using a digital picture instead.
And there is more good news: protecting your design patent in court posses less challenges than protecting other types of IP your brand may own. For example:
· unlike in a trademark infringement case, a costly survey to show confusing similarity is not needed; and
· unlike in a copyright infringement case, the designer does not have to prove access and the USPTO will not reject the application because it is an utilitarian article.
Now, to give you the full picture, you need to know there are some disadvantages, which include: most garment employers/principals do not have the proper pre-employment agreement to vest the title of the fashion design patent in the employer/principle, since unlike the work for hire concept in copyright law, the employer only has a “shop right” in the design patent, which amounts to an implied nontransferable paid-up license from the creative employee; only registered patent lawyers can apply for design patents, even though a design course is not a prerequisite for qualifying to be a registered patent lawyer, instead science/engineering lab courses are required; and styles change so quickly in fashion, so you need to have "staple" or iconic pieces in your collection.
Other brands besides Lululemon are successfully using design patents to protect their items. For example, Nike aggressively protects its shoe designs using design patents and files many design patents. This Nike’s Design Patent No. D659,988 was issued after less than three-months.
Yet, many fashion lawyers are not familiar with design patent law, giving design patent plaintiffs a leg up, and many fashion designers do not have an ongoing relationship with a patent litigator who the designer can call on to show up in federal court on 24 hour notice to defend a TRO.
So don’t be stuck in down-dog; instead try a sun salute, center your third eye and remember to consider design patent protection to keep your brand in top shape.