Nov. 21, 2022 – Whether manufacturing high-tech devices, cannabis, or high-fashion clothing, companies must remain vigilant for threats to their intellectual property. And, while the considerations may be different, the legal issues are the same. This article will examine three very different industries and the IP issues relevant to these industries, and illustrate the application of trademark law to each.
The fashion industry is very competitive, fast-paced and seasonal. Unlike other sectors of the market, fashion thrives on counterfeits. Fashion designs seen on the catwalks of New York Fashion Week are often copied and sold at low prices the following week. But rather than harming the brand and reputation of high-end fashion designers, the fact that cheap knockoffs are being sold actually gives more status to the “real thing”, which fashionistas will always covet, thus increasing brand value.
It is also common for fashion designers to not only take inspiration from the world around them, but also from their competitors. So how are they doing? And, does such copy actually translate to increased revenue for premium brands? There is no doubt that there is an entire sub-industry in the fashion world made up of counterfeit handbags, shoes, and other fashion items.
However, intellectual property plays an important role in the proliferation and profitability of the apparel industry, largely through trademark law, not copyright. It seems counterintuitive that fashion does not enjoy the same level of protection under US copyright laws as other creative media such as art, literature and film, because fashion designs are also creative and original. However, the problem is that to be copyrightable, the elements cannot be functional. Therefore, the basic design of a garment can be copied without legal consequences. A quote attributed to Coco Chanel sums it up: “If you want to be original, be ready to be copied.
This does not mean, however, that the clothing industry is exempt from intellectual property protection. Trademarks are widely used by fashion brands to protect against counterfeits (counterfeit products) and other counterfeit products. For example, companies can use trademark law (in the form of trade dress) to protect the visual characteristics of their products, such as color or patterns.
Burberry, for one, has trademarked its well-known Burberry plaid and aggressively protects it from counterfeiters. Christian Louboutin has won its uphill battle to gain trademark protection for its red-soled shoes. There is no doubt, when someone sees a pair of shoes with the iconic red soles, the source of these goods.
Additionally, brand names and logos (such as Hermès, Gucci, and Louis Vuitton) signify a certain quality expected by consumers, as well as the social status associated with these products. As a result, there will always be consumers willing to shell out a small fortune to purchase a Birkin bag. And apparel companies can still protect their brand names, i.e. their trademarks, through traditional means: cease-and-desist letters, trademark infringement claims, and border enforcement actions. .
Like the clothing industry, intellectual property issues in the cannabis industry are also tricky, but for very different reasons. As everyone knows, cannabis is illegal under federal law, at least for now. And, each state’s laws vary widely. So what does this mean for cannabis companies looking to protect their brands?
For now, the biggest obstacle to protecting a cannabis brand name remains that cannabis is still listed as a Schedule I drug (the same category used for LSD and heroin) under of the Controlled Substances Act. Therefore, companies cannot obtain federal trademark registrations for cannabis products. Indeed, the Lanham Act only permits the registration of goods which are lawfully “sold or carried in commerce”.
Although the 2018 Farm Bill resulted in an exception for the registration of “hemp” trademarks (i.e. cannabis plants and their derivatives containing no more than 0.3% THC by dry weight ), all other cannabis products are not eligible for federal approval. Deposit mark. Additionally, this bill did not eliminate the Food and Drug Administration’s jurisdiction over hemp-containing products, nor remove cannabis containing more than 0.3% THC from Schedule I.
Additionally, companies can file for state trademark registrations in states where cannabis products are legal; however, it does not provide broader national protection to companies seeking to enforce their trademarks in other states where there may be infringers.
A creative way for companies to avoid these hurdles is to file federal trademark registrations for ancillary products, such as rolling papers, lighters, ashtrays, T-shirts, and more. This concept is called “trademark laundering”, when companies file trademarks whose trademarks are also the brand names of cannabis products (or marijuana strains, which raises other issues not covered in this article. ). By doing so, in combination with state registrations, cannabis companies can create a patchwork of protection. While not ideal, these strategies allow companies to assert brand protection against competitors and hopefully deter counterfeits.
A basic principle of trademark law is that generic terms cannot be protected. This means that no company can obtain the exclusive right to use terms such as “computer” or “operating system”. The challenge for companies selling high-tech devices to the general public is that they may feel the need to use generic (or descriptive) terms so that consumers understand the nature of the products sold by the companies. In other words, the nature of the products can be so abstract or complex that laypersons need a “simplified” brand name to understand what they are buying. Finding the perfect balance of a brand name that conveys the nature of good, without clearly describing it, is a challenge.
Under trademark law, this is called a “suggestive mark”, a mark that alludes to the nature or aspect of the good, allowing consumers to easily relate the product to the mark. An example of an obviously very successful suggestive brand in this industry is Microsoft, which offers software for small computers.
Clearly, in an industry heavily dependent on invention and innovation, patents are an important issue for high-tech companies. However, the ability to sell these products under a strong, protectable brand that consumers identify with innovation, quality and reliability can be just as important to these companies. In fact, as the global economy increasingly depends on online platforms for marketing and sales, high-tech companies need to distinguish themselves from their competitors (including those selling cheap counterfeits) with an image strong and distinctive brand.
Indeed, one of the challenges faced by these companies in the United States is stopping the importation of counterfeits from Asia, particularly China, where many counterfeit goods are manufactured. This requires trademark registration with U.S. Customs and Border Protection (CBP), which has the authority to detain, seize, confiscate, and ultimately destroy goods seeking entry into the United States if they bear an infringing mark that has been registered in the United States. Patent and Trademark Office, then registered with CBP.
Therefore, it is crucial for tech companies to engage in a comprehensive brand strategy not only to develop and build a strong brand, but also to use proactive and strong measures to protect their intellectual property interests. .
Although companies in very different industries have varying issues, concerns and challenges regarding their intellectual property interests, one common thread shared by all companies – whether they sell handbags, marijuana or smartphones – is that they all need to engage in comprehensive strategies to protect their brands – from design to wearable, from seed to sale, or from concept to completion – to ensure that they have strong and protectable trademarks.
In particular, regardless of the sector of activity, companies must use brand names that are non-generic and non-descriptive marks easily recognizable by their consumers, for which they can claim exclusive use and prevent infringement. Additionally, it is essential that all companies employ aggressive protective measures (such as cease-and-desist letters, coordination with CBP, and, if necessary, litigation) to prevent counterfeits and counterfeits.
The opinions expressed are those of the author. They do not reflect the views of Reuters News, which is committed to integrity, independence and non-partisanship by principles of trust. Westlaw Today is owned by Thomson Reuters and operates independently of Reuters News.