Fashion tech: redesigning trademark protection

The tech and fashion industries have seen more collaborations in 2016 than in any previous year, with high-profile co-branding relationships recently forged between French fashion designer Marchesa and IBM, Tory Burch and Fitbit, and Kate Spade and Everpurse. The resulting products are an exciting mix of innovation and creativity. They have melded form and function in ways never imagined.

For example, Marchesa's "Cognitive Dress" debuted at the New York Metropolitan Museum of Art Gala this fall. Using IBM Watson's data-driven AI technology, the dress was embedded with LED lights that changed colors in real-time to express emotions such as passion, excitement and curiosity. Watson tapped into social sentiment from Twitter users commenting on the Gala and created a colorful array of floral lights.

The Cognitive Dress is possibly the first emotionally intelligent garment in fashion history. But to date, many brand owners have not been proactive in seeking non-traditional trademark protection for their innovative designs. While acquiring that protection is not without challenges, these types of marks hold great promise as an avenue for establishing IP rights in fashion tech products.

Unleashing Trade Dress

Trade dress protection may be available to many fashion tech companies as their products often have a unique physical appearance. Trade dress is typically described as the "look and feel" of a product or packaging "and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques." Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992). Brand owners should be aware that there are hurdles to obtaining a trade dress registration. Designs cannot be functional, and they must either be inherently distinctive or have acquired distinctiveness (or secondary meaning) through long-term use. Because product designs are not considered inherently distinctive, brand owners must be prepared to prove that their product design has acquired consumer recognition in the market - a challenge in the fast-changing world of fashion where popular designs are instantly copied. The Trademark Office typically requires substantial evidence such as sales figures, advertising dollars spent, promotional materials, and unsolicited media coverage over a long period of time (usually 3-5 years) before it will find acquired distinctiveness and allow registration on the Principal Register.

These traditional methods of determining acquired distinctiveness are not in synch with the way many fashion products come to market. In today's social-media-driven society, consumer recognition is often gained much more quickly through Facebook, Instagram, Pinterest and other platforms. Courts are beginning to recognize this reality and have suggested that social media may play a role in establishing secondary meaning.

The U.S. District Court for the Southern District of New York recently acknowledged social media's potential relevance to secondary meaning in LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A., 14-04869 (S.D.N.Y. 2016). There, LVL XIII accused Louis Vuitton of trademark infringement, alleging that the rectangular metal plates that adorned the front of its sneakers were confusingly similar to its own toe plates. The court found that LVL XIII had not established secondary meaning despite the popularity of the sneakers because it did not satisfy any of the traditional factors for determining acquired distinctiveness: LVL XIII had not engaged in any traditional paid advertising, supplied only minimal evidence of unsolicited media coverage, had only $141,241 in revenue, and did not show that its use of a metal toe plate was exclusive since Louis Vuitton's sneaker came on the market just 8 months later. Also, LVL XIII was unaware of any third-party attempts to plagiarize the toe plate and did not provide any evidence of consumer studies linking the design to a single source.

LVL XIII sought to provide expert testimony that the toe plates had acquired secondary meaning through data the expert had obtained from social media platforms and press coverage retrieved through Google searches. Although the expert allegedly reviewed over 100,000 unsolicited third-party online posts, he did not preserve or produce the vast majority of these posts in his report. The fact that the judge discussed LVL XIII's potential expert at length suggests that the court would have seriously considered social media as evidence of secondary meaning had the expert produced large quantities of authenticated evidence from a wide variety of social media platforms. In the future, courts are likely to permit expert testimony that properly authenticates evidence such as Twitter tweets, Facebook likes, Instagram posts, account followers and other measures of engagement. Still, a social media advertising campaign without traditional advertising and other metrics will not likely be enough to establish secondary meaning any time soon.

Harnessing the Power of Other Non-Traditional Marks

Until courts acknowledge social media activity as a primary source of consumer recognition, fashion tech companies will need to think creatively about protecting their innovative designs. Other non-traditional trademarks, such as motion and sound marks, have fewer hurdles to registration. These types of marks are capable of inherent distinctiveness and do not necessarily require secondary meaning to obtain a registration.

For example, while it may take time to establish consumer recognition in the Cognitive Dress design, Marchesa could consider obtaining a trademark registration for a motion mark if there are unique sequences of lights and/or color combinations that are source identifying. Similarly, fashion tech products may emit sounds that can be protectable without a showing of acquired distinctiveness. And, brand owners could consider incorporating elements of their product designs into product packaging (a form of trade dress) which, unlike product configuration, is capable of inherent distinctiveness. Applications for inherently distinctive marks can be based on an "intent to use," an important advantage and valuable method for establishing priority before a product goes to market.

The fashion and tech worlds have collided and inspired a new generation of designers - now it's time for these innovators to think outside the box in protecting their brightest designs.