Design Patents and Utility Patents
Design Patents protect the original and ornamental design of an article of manufacture. It protects the appearance of an object. When Copyright protection is not helpful, fashion companies will go for design patents protection. Example of fashion objects that might be protected are eyeglass frames, handbags, footwear, perfume bottles, jewellery, tabletop items etc.
Utility Patents protect the functionality of the product. It does not protect aesthetic elements that Design Patents protect. Example of utility patents is a new clasp device on a handbag or a new mechanism on a pair of glasses or a new process or techniques in sewing or washing fabric or jeans. For fashion players to apply for utility patent, the products must be new and original i.e. novel and must be “nonobvious” (never been seen before). If designer invented new button, the new button must never been used or seen compared to existing buttons (which we called prior art).
Example of Fashion Law cases:
L.A. Gear, Inc. v Thom McAn Shoe Co/, 988 F.2d 1117 (Fed. Cir. 1993)
Issue : Whether L.A. Gear’s design patent on its “Hot Shots” line of shoes was infringed by Melville Corporation’s competing line of shoes?
Argument :
(1) Melville argued that L.A. Gear’s patent was invalid because all of the shoes’ components were functional (e.g. the mesh on the side of the shoe provided foot support) and were no used for ornamental purposes. Court rejected this argument since overall appearance of the patented shoe was ornamental so it made no difference.
(2) Melville argued that L.A. Gear’s design patent was invalid because it was “obvious” to an ordinary shoe designer, referring to some 22 prior arts. Court also rejected this argument since there was no “teaching” in the prior art to combine them in the way shown in the design patent.
Held :
The Federal Circuit in Washington DC ruled that Melville had infringed L.A. Gear’s design patent, found that the infringement was willful and suggested that L.A. Gear be awarded attorney’s fees and damages.
Further reading – https://www.casemine.com/judgement/us/5914be96add7b049347a9330
Pictures taken from https://prezi.com/wiwb_d2yceee/la-gear-v-melville-corporation-thom-mc/
Other examples of design patents cases are the shapewear brand Yummie Tummie sued billion-dollar shapewear giant Spanx asserting infringement of its design patents. And Lululemon sued Calvin Klein for infringement of the design patents in its multi-waistband yoga pants. Both cases settled quickly. These cases show that design patents is an effective way to protect fashion products.
