How the Lululemon v. Costco case could impact IP strategies for private label branding
The market for knockoff products is at an all-time high, as social media trends and “dupe finder” accounts have led consumers to actively search for duplicate versions, or “dupes” of fashion, makeup and furniture products over the real thing.
These products differ from purely counterfeit products, as dupes do not claim to be the authentic item, but instead are openly marketed as convincing lookalikes of the original. Dupes are often seen as cost-effective alternatives to expensive name-brand products, which influencers and users share online to flaunt their affordable alternatives. The craze has not gone unnoticed by designers and brand owners, as popular brands can often spawn hundreds of duplicate listings on online marketplaces, drawing valuable customers away from their brands.
In a dupe-filled landscape, brand owners are fighting back through lawsuits against purported duplicate providers. Lululemon, for example, filed suit against Costco’s Kirkland clothing brand for allegedly copying its jacket and pants designs, asserting traditional IP for fashion brand owners, including trade dress and trademark infringement, as well as a claim for design patent infringement. The case is still in its early stages, but it can be informative to brand owners that are eager to learn how to best protect their products against dupes as this legal sphere continues to evolve. In this landscape, design patents — a form of IP that is not traditionally used in the fashion or furniture industries that are more prone to dupes — could become an important tool in pushing back against the dupe industry.
While patents are often associated with traditional mechanical and chemical inventions, they can also be used to protect original designs applied to or embodied in a manufactured article. Design patents give their owners 15 years of protection from their date of issue against others using the claimed designs. Design patent protection can be coupled with trademark and trade dress protection during and after this 15-year patent term. Most relevant to the industry of dupes is that design patent enforcement turns narrowly on the aesthetic similarity of the products, rather than a more complex test for trade dress, the likelihood of confusion analysis, that can be harder to prove.
Specifically, design patent infringement turns on whether an ordinary observer would find the accused design to be “substantially similar” to the claimed design, such that they would be deceived into purchasing the accused design believing it to be the claimed design (Gorham Co. v. White, 81 U.S. 511 (1871)). In other words, brand-owners can rely on the similarities of the product itself rather than the multi-factor analysis required to prove trade dress infringement.
To be eligible for a design patent, an item’s design must be new and unique, cannot affect the function of the item, and should be inseparable from the item itself. The key to design patent applications is timing. To obtain a design patent application in the US, design patent applicants have a one-year grace period to file an application – i.e., the application must be filed no later than one year from the first public disclosure or sale of the product. In many foreign jurisdictions, there is no such grace period, and design applications must be filed before any public disclosure to be eligible for patenting.
Recently, brand owners in the clothing and furniture industries have found success patenting their clothing and furniture designs. Examples of recently granted design patents include:
Once issued, design patents allow users to prevent others from selling products with the design elements they have claimed. This provides a much easier basis to challenge infringing products than that of a trade dress registration and enforcement, as trade dress registration is often difficult to obtain for certain products. Additionally, in a social media landscape where consumers are actively seeking out and touting their purchases of duplicate products rather than the real thing, likelihood of confusion is increasingly difficult to prove.
Brand owners have begun asserting their patents against dupe manufacturers and sellers, both in the patent infringement suit context and in the online takedown contexts. Many online retailers, including Amazon, eBay and Walmart allow brand owners to submit intellectual property claims to report patent (in addition to copyright and trademark) infringement claims. The marketplaces will then review the IP owner’s claims, and if the product is deemed infringing by their reviewer, the listings will be removed from their website.
For example, the designer for the PopFlexActive brand of activewear, Cassey Ho, reported that her various design patents for her brand’s clothing products helped her take down 499 dupes on the e-commerce platform Shein. Brand owners can also assert their design patents in patent lawsuits for infringement, which was one of the claims brought by Lululemon against Kirkland. Summer Classics, an outdoor furniture company, also sued Costco for design patent infringement (among other claims) for its furniture designs. The suit settled last year.
In sum, brand owners have already found success acquiring design patents for a variety of clothing items, furniture items, and other products in industries susceptible to dupes. This protection may grow into one of the most powerful tools in a brand’s arsenal for protecting its intellectual property, as asserting a design patent is relatively straightforward compared to other forms of IP protection.
NGE will be closely monitoring pending patent infringement cases and how brands leverage their design patents in the coming years to assess the long-term viability of using them against dupes.
Ali Maloney, associate at Neal Gerber Eisenberg, Michael Kelber, partner and chair of the Intellectual Property practice group at Neal Gerber Eisenberg, and Tanvi Patel, partner at Neal Gerber Eisenberg, authored this blog post.
