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Fashion and IP, Part Three: Trademark & Counterfeiting

Trademark is likely the first area of IP that fashion brands think about. It’s the name or symbol that will appear behind a runway, on a website, or on a hangtag. This post discusses trademark law protection for fashion brands, and the relationship between trademark and counterfeiting.

(Psst… this is part three in a four-part series. Need to catch up? For Fashion and IP Part One (Copyright), click here, and for Part Two (Trade Dress), click here.)

Fashion and Trademarks: A Little Background

You might recall from previous posts (like this one or this one) that U.S. trademark law protects the name, symbol, or logo under which you sell your goods. In the world of fashion, those goods would be apparel, jewelry, or accessories. As with trade dress, a mark must act as a “source identifier” in order to be protectable. That is, a customer should see your name or symbol and make an immediate association between your trademark and your product. The “source” that’s identified is not necessarily the physical location in which your product is made or manufactured. Rather, the source is you or your company. A trademark’s purpose is to protect the buyer or consumer. Once he sees your mark, he or she knows that the jacket or watch he is about to purchase is of a certain quality.

Trademark and Counterfeiting

So, how does trademark protection relate to counterfeiting? There is a difference between the two.

Trademark Infringement, Explained

In simple terms, trademark infringement consists of B’s unauthorized use of A’s trademark, (or a confusingly similar trademark) in connection with  goods that are confusingly similar to those sold by B.

Counterfeiting, on the other hand, consists of B’s manufacture, import/export, distribution or sale of products identical to A’s products. Counterfeit goods are usually of a lesser quality. They are also usually sold under a trademark identical to, or mostly indistinguishable from, A’s mark. Counterfeit products are also referred to as “fakes” or “knock-offs,” and are often found in backrooms of stores or street-side kiosks in big cities (think: that scene in the film Serendipity with the “PRADO” wallet) or on eBay. eBay provides excellent resources to brand owners: it removes suspicious items, works with law enforcement to prosecute offenders, and provides tools that allows rights owners to report listings that infringe upon intellectual property rights. The VeRO program (short for Verified Rights Owners) allows trademark owners to create a VeRO Participant Profile page; something in which fashion brands such as Chanel, Oakley, Inc., Tiffany & Co., and Vera Bradley participate.

How To Protect Yourself (And Why)

Maybe you are all over trademark protection. Maybe you just want to create a quality product and you are not concerned with trademark protection. In the end, it usually comes down to whether you want to spend the time and monetary resources to protect your brand. Remember, though, that it all comes back to that association of quality that a customer makes once he sees your brand name on your product. To ensure that association of quality is a positive thing, consider registering your trademarks. (Doing so could entitle you to certain statutory damages in cases of counterfeiting, including the potential to block imports that infringe upon your mark.) Also, look into participating in eBay’s VeRO program, monitoring online usage of your mark (or marks similar to yours), and educating your employees and retailers on the proper use of your marks.

Stay tuned for the final post in this series, which will discuss design patents.

What’s next?

Click the image below to sign up for Spear IP’s [free] Essential Legal Checklist for Fashion Brands.

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