When thinking about intellectual property protection for fashion and clothing, patents are probably not the first type of intellectual property that comes to mind. As a fairly low-tech consumer good, fashion intellectual property protection tends to be more relevant in the trademark context. However, patent protection is available for fashion, and fashion designers can and should obtain fashion patent protection for their innovations. Fashion patents can protect both technological innovation through utility patents and designs through design patents. Given the immense value of the apparel market (estimated at $1.5 trillion in the U.S. in 2021), companies that design and sell apparel would be well-served by obtaining patent protection for their products.
Patents vs. Trademarks vs. Copyrights: What Difference Does It Make for Fashion?
Fashion is an industry where there is considerable overlap between the three main types of intellectual property protection: patents, trademarks, and copyrights. In a nutshell:
- Utility patents protect new and useful processes, machines, manufacturers, and compositions of matter. Design patents protect the unique ornamental design of an article of manufacture.
- Trademarks protect information that indicates the source of a product and distinguishes that product from those of others, including brand names, logos, slogans, and jingles, among others.
- Copyrights protect original works of authorship, including music, art, literature, film, and photographs
In some cases, an element of a fashion product could be protected by more than one form of intellectual property. For example, the United States Patent and Trademark Office (USPTO) allows the use of trademarks in design patent applications under certain circumstances and also permits copyrighted ornamental designs to be protected with design patents. According to the USPTO, “the author/inventor may not be required to elect between securing a copyright or a design patent.” A single fashion product may also be protected by both utility patents and design patents, as each type of patent protects different elements of the product.
Why Choose Patent Protection for Fashion
Utility and design patents offer several key advantages for fashion designers over other types of intellectual property protection. While some elements of a fashion product may be protectable by trademark, the intellectual property protection afforded by trademarks applies only to source-identifying information. A design that is merely ornamental (and thus non-source-identifying) would be eligible for design patent protection, but not trademark protection. Copyright protection for fashion is also limited, as courts generally consider all clothing to be per se utilitarian and thus ineligible for copyright protection. While there are some exceptions to this general rule (e.g., jewelry), registering and enforcing a copyright for clothing can be an uphill battle. Utility and design patents tend to be a stronger and more appropriate form of intellectual property protection for fashion than trademarks and copyrights.
Protecting Fashion with Utility Patents
Utility patents protect new and useful processes, machines, manufacturers, and compositions of matter. While utility patents tend to be more common in high-tech industries than in the fashion industry, certain fashion intellectual property may nonetheless be eligible for patent protection. The key feature of utility patents is that they protect the way a product functions. Any fashion-related innovation that improves the functioning of a product — such as a new type of fabric, a new mechanism for snap-button closures, or a shirt with removable sleeves, for example — could thus be eligible for a fashion patent under the right circumstances.
The USPTO has strict requirements for utility patents. To qualify for a utility patent, the applicant must demonstrate to the USPTO that the innovation meets the following criteria:
- Subject matter: The scope of subject matter that is eligible for patent protection is vast but not unlimited. Certain types of innovations may be rejected for patent protection by the USPTO if the innovation is based on or involves the use of an abstract idea, a law of nature, or a natural phenomenon.
- Novelty: A patentable invention must be new (or “novel”) from all other inventions that came before it. This is known as “prior art,” and includes inventions that are described in issued patents and patent applications, described in printed publications, in public use, on sale, or otherwise known to the public.
- Utility: A patentable invention must be useful to qualify for a utility patent. In the patent context, an invention is “useful” if it has a specific and substantial utility. Innovations that are purely ornamental and have no utilitarian purpose would fail the utility requirement.
- Non-obviousness: An invention is non-obvious if it is more than an obvious improvement over the prior art. Non-obviousness in the patent context is somewhat of a nebulous concept but generally can be demonstrated by showing that the differences the invention at issue and the prior art would not have been obvious to a person skilled in the art to which the invention pertains.
- Specification: An invention in a patent application must be described with enough detail and specificity so as to enable a person skilled in the art to which the invention pertains to make and use the invention without undue experimentation.
The process of applying for a patent at the USPTO is known as patent prosecution. Once an applicant submits a patent application, the USPTO will assign the application to a patent examiner, who will evaluate its compliance with the above requirements. The examiner will typically issue one or more rejections, which the applicant can overcome by amending the patent application to address the examiner’s concerns. At the conclusion of a successful patent prosecution, the USPTO will issue a utility patent, which will remain in force for 20 years and is not renewable.
Protecting Fashion with Design Patents
Design patents protect the way a product looks rather than the way it works. As such, design patents tend to be a much more common form of fashion intellectual property protection than utility patents. Generally, design patent protection is available for “new, original, and ornamental designs for articles of manufacture.” This can includes:
- A design. For an ornament, impression, print, or picture applied to or embodied in an article of manufacture (surface indicia);
- A design for the shape or configuration of an article of manufacture; and
- A combination of the first two categories
Put simply, design patents protect both the shape of an article of manufacture and its surface ornamentation. Applying for a design patent is similar to applying for a utility patent; both types of patent applications undergo patent prosecution during which an examiner determines their compliance with the legal requirements to obtain a patent, as well as checking the current invention/design against the prior art. However, design patent applications are simpler than utility patent applications, consisting largely of drawings of the design rather than lengthy descriptions of the functioning of the invention. Design patents remain in force for 15 years (five years less than utility patents) and are similarly non-renewable.
Below, we’ll take a look at the requirements for obtaining a fashion design patent in detail.
Article of Manufacture
Design patent protection is limited to designs for articles of manufacture. Whether the design is for the shape of a product or for its surface ornamentation, the design must be affixed to or embedded into a tangible physical object. It must be inseparable from the object to which it is applied and cannot exist alone. Thus, designs that stand alone are not eligible for design patent protection. Computer-generated icons are included in the USPTO’s definition of “article of manufacture” so long as the icon is shown on a computer screen, monitor, or other display panel.
The concept of novelty for fashion design patents is virtually identical to that for utility patents. Any design that was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public is not considered novel. The most common legal test for determining novelty is the “ordinary observer” test, which states that “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”
Designs must be “original” to qualify for design patent protection. Originality requires that the design be more than a simulation of a well-known or naturally occurring object or person. This occurred, for example, when the USPTO rejected a design patent application for a baby doll, in which the court held that a baby doll merely simulates the natural features of a baby and is thus not eligible for design patent protection absent some “grotesqueness or departure from the natural form.”
Ornamentality is the primary quality that distinguishes design patents from utility patents. An ornamental design is one that is created for the purpose of ornamentation and cannot be the result or a mere by-product of functional or material considerations. In other words, the design must be primarily ornamental, offering little to no utilitarian advantage. To determine whether a design is primarily ornamental or primarily functional, courts look to the design in its entirety and the overall appearance of the article. If a particular design is essential to the use of the article, the design cannot be eligible for design patent protection. This could occur, for example, where the unique shape of an article of clothing increased its breathability; in that case, the shape could not be said to be primarily ornamental, as it was chosen for a utilitarian purpose.
Non-obviousness in the design patent context is very similar to the utility patent context. In order to be unpatentable due to obviousness, the design must have been obvious to a designer having ordinary skill in the art to which the patent pertains. When determining obviousness, the USPTO and courts compare the design in the design patent application to other designs actually in existence — not by selecting and combining features from multiple existing designs. A design will be found to be obvious if the design characteristics of the reference design are “basically the same” as the design in the design patent application.
Advantages of Design Patents over Utility Patents for Fashion Brands
Design patents offer several advantages over utility patents for fashion intellectual property, such as:
- Cost: Design patent prosecution tends to be much less expensive than utility patent prosecution, as it generally takes attorneys less time to prepare design patent applications than utility patent applications. The USPTO also frequently issues design patents after only one review, whereas utility patents undergo numerous rounds of review, which increases filing fees and attorneys’ fees.
- Speed: The USPTO tends to issue design patents faster than it issues utility patents. The average total pendency for design patents at the USPTO is about 21 months versus about 24 months for utility patents.
- Allowance rate: Design patents are much easier to obtain than utility patents. The average allowance rate (the percentage of patent applications allowed) for design patents is about 84%, compared to just over 60% for utility patents
- Protection: Despite being easier and quicker to obtain than utility patents, design patents offer the same strength of intellectual property protection as utility patents
One drawback of design patent protection is that design patents remain in force only for 15 years rather than the 20 years offered by utility patent protection. However, that drawback is mitigated by design patents’ shorter prosecution timeline. And in a fast-moving industry like fashion, where tastes can change dramatically from one year to the next, 15 years of patent protection is sufficient for most designers.
How to Apply for a Fashion Patent
The easiest way to get started on protecting your fashion intellectual property is to file a design patent with the USPTO. Hiring an attorney to draft and prosecute a fashion patent application can maximize your chances of success. Be sure to hire an attorney who has significant experience handling fashion design patents at the USPTO.