Trademark Infringement In The Fashion World: Aesthetic Functionality And Other Defenses

It is a truism that a fashion company is nothing more than its brand, it is an identity affixed to clothing so the purchaser may adopt by osmosis the brand's genre.1 The brand, the trademark, encapsulates all of the good will and secondary meaning associated with apparel and accessories. Essentially the same garment produced and labeled from parallel, divergent sources will be perceived and priced accordingly. Moreover, the art of valuation goes beyond a multiple of EBITDA in the present or projected; it captures, or should capture, the intangible value represented by the trademark.

Since the trademark or brand is so core to a fashion company it is no wonder that prosecution of trademark claims2 is replete to the extent of its own parody.3 To effectively protect and enforce a company's true, bona fide and essential commercial rights without the speciousness of broad fire prosecutions incurring unnecessary legal costs and diversion of business efforts, it is important to have a familiarity with likely defenses to claims of confusion4 and therefore infringement.

Aesthetic Functionality is a key defense for a fashion brand against a trademark infringement claim due to design. There exist two types of functionality: utilitarian and aesthetic.

Very simply trademark protection cannot be granted for an item or product which is utilitarian that is inherently useful. Utilitarian functionality has three fundamental considerations:

Whether the feature or aspect is essential for the product use; Does the feature impact cost and quality; and If the grant of a trademark would place newcomers or competitors at a commercial, in contradistinction to a reputational, disadvantage.5 If one is subject to claim of trademark infringement based upon a trademark which is functionally utilitarian, as determined by the factors set forth above, then such claim will fall. However, the more interesting defense for the fashion company accused of infringement is aesthetic functionality. To conceptualize this issue of aesthetic functionality it is best to ask whether the purported trademark identifies a source (a bona fide trademark) or the product (an invalid trademark). If the trademark places a competitor at a non-reputational commercial disadvantage then that trademark should not stand.6

The Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 778 F. Supp. 2d 445, 447-48 (S.D.N.Y. 2011), often mischaracterized, is simply a dispute as to aesthetic...