Fashion Brands - The Challenge of Big-Volume, High-Speed Trademark Name Searches

Nadaline Webster,

According to a 2011 study at the University of Florida, it is approximately 170,000 years since humans first started wearing clothes. The study of the lifecycle of clothing lice (ewwww!) doesn’t rule out that there may have been advances in clothing prior to this and certainly doesn’t comment on what that clothing might have consisted of. If ancient humans were anything like today’s population, you can be sure that there was a group of them always right on trend wearing this season’s loincloth.

Fast forward a bit and those loincloths have transformed into an industry that is globally worth $1.2 TRILLION and employs 4.2 MILLION people around the world. In the US alone, $250 BILLION is spent on fashion each year. This may be partially due to the ever changing trends in fashion and the need to ‘keep up’ with what everyone else is wearing. Nathalie Gaveau commented,

“Fashion and music evolve and change so fast, that in the blink of an eye the trends have switched in a different direction.”

This can be somewhat problematic for those charged with creating and protecting the intellectual property of the world’s most desirable brands. They have to try to guard against rampant counterfeiting, trademark infringement and free-riding attempts. Plus, they have to ensure that they come up with a world class brand name which is as unique as the clothes carrying the label! Read our previous article - 7 Mistakes to Avoid When Choosing a Product Brand Name.

Add to this then, the seasonal nature of fashion and the large number and variety of goods produced in tidal waves throughout the year. Often, the lead time for the clearance of a large number of new brands, whether it is intended to register them or not, can be counted in weeks if not days.

It isn’t exactly compatible with the historically slow trademark clearance process

Manual trademark clearance is slow, detailed, methodical work regardless of whether you insource or outsource and the more exhaustive the search parameters, the more expensive it gets in time, money or both. I think that many professionals in the field will agree that there is a large element of compromise between ideal and realistic in trademark clearance. The additional concerns regarding the spread of proposed regions involved and alternative meanings in other languages piles up the workload. Add time pressures and constraints into the mix and you can see why the weeks running up to a new launch event are often exceptionally stressful for both the marketing and the legal teams!

RECOMMENDED READ >> The In-House Trademark Attorney's Guide to Reducing Expenses

In 2016, Lex Machina released a report into litigation across industries as it relates to trademarks and the fashion industry features largely across the various metrics listed. A top ten listing of companies who were the plaintiffs in trademark related litigation from 2009 - 2016 includes Coach, Chanel, Deckers Outdoor Corporation, Tiffany, Louis Vuitton, Gucci, Abercrombie & Fitch, Adidas and Reebok.

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3 luxury fashion houses take the top 3 spots in a list of companies who have won the highest damages for trademark infringement, in first place and taking gold is Chanel awarded $1 Billion, taking silver is Burberry with a paltry $523 million and in third place Gucci with a mere $208 million. The report does mention that the bulk of damages were gained in default judgements and consent judgements. It seems that not many cases make it all the way to trial. Those are sobering figures and they are only a very small part of the story. What are the costs of those activities to their respective companies? How much money, energy and focus does it divert away from their goals and aspirations?

What if there were a way to narrow the scope of the compromise?

The sharp rise in the use of technology-assisted tools in your trademark clearance is one of the many ways that companies are seeking to lower their vulnerability in the fashion industry. The ability to create an entire complex search string, run it against the relevant regions, perform a linguistics check and include top level common law and domain checks for a name in 15 seconds is transforming the nature of the compromise that in-house counsel have to make. Will it eventually reduce the number of fashion houses in litigation top ten lists? I guess we will have to wait for the next litigation report to find out!

TrademarkNow provides cutting edge technology assistance in trademark searching and watching along with unparalleled portfolio management and business intelligence tools. Try a Free Trademark Search to see how the world’s fastest and most accurate search technology could help you save money by bringing this work in house or see a sample search report.

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