Reasoning of the Law

Interview with Brian Chau (Commentary in Italics)

1.  How important is it for a company to develop brand recognition through trademark?
Depends on the industry. Trademarks are important where there is little customer recognition of the merits of your product or where you have a large number of competitors. For example, Coca-cola's trademark is far more valuable than Apple's trademark because Apple's products can themselves, while Coca-cola's can't.

He explains the importance of trademarking especially when the market is saturated with similar products. I thought he gave a great example with Coca-Cola. There are plenty of other colas in the market and through a trademark, Coca Cola was able to create a lifestyle image around the product. As they became better known, it was that much more important to register their trademark to ensure other would not infringe upon what the company built. “A trademark is any combination of words and symbols that a business uses to identify its products or services and distinguish them from others” (Page 509). Even though there are plenty of fizzy drinks on the market, the brand logo distinguishes it from others similar products.

2.  Why is it necessary for companies in the fashion industry to protect their product through trademark registration?
You get trademark protection automatically, but trademark registration gives you benefits you would have on top of common-law trademark protection, such as presumed notice by infringers,
cross-jurisdictional enforcement, etc. Given the ease of copying in the fashion industry, it's important to have all means available to stop infringers.

Brian brings up an interesting point here. Under common law, the first person to use a mark in trade owns it. Registration under the federal Lanham Act is not necessary. However, registration has several advantages:

·         Even if a mark has been used in only one or two states, registration makes it valid nationally.

 

·         Registration notifies the public that a mark is in use, which is helpful because anyone who applies for registration first searches the Public Register to ensure that no one else has rights to the mark.

·         The holder of a registered trademark generally has the right to use it as an Internet domain name. (Page 509)

It is interesting to note that there is protection of a brand mark regardless of federally registering it or not. I agree that it is probably in the brands best interest to trademark the logo because it is very easy to steal and replicate designs. One can see this just by typing “fake Louis Vuitton” into a Google search.

3.   If I make a design that unbeknownst to me is a reasonable facsimile of someone else's design, what legal recourses will the offended party take against me?
This is both a copyright and trademark issue. Copyright may not apply if you can show that you independently designed it, without access or copying another's design. Trademarks on the other hand, they can demonstrate that if a potential customer would be confused by your design and think that the object came from the original designer, then they may be able to sue for passing off (unregistered) or trademark infringement (registered). They can either sue for an injunction (stop using it) or damages (payment).

Brian’s standpoint on copyrights are interesting. I think it would be difficult to prove you did NOT access another designer’s design for the sole issue that the designs looks similar enough to bring before a court. “The holder of a copyright owns the particular expression of an idea, but not the underlying idea or method of operation” (Page 506). It is very difficult for brands to go after copyright pirates and seek damages. We can see this by the amount of counterfeits there are out in the market now.

4.   In your opinion, can it be argued that the common practice of copying new fashion designs in affect forces designers to come up with fresh new ideas?
That's one side of the argument. The other side is that fashion designers invest significant resources in developing their ideas and no one would create if it would be immediately stolen by a third party.

I have to agree with both arguments. Yes, it does force designers to come up with the newest greatest ideas, but on the other hand, these designers are investing time, money, and effort into creating a tangible form of their artistic expression. This is why it is important to have copyright laws in effect to at the very least, dissuade others from stealing a designer’s work.

5.   When in the startup of a business is it advisable to trademark your brand?
You can either do it before you use it as a proposed use, or after you start using it. It depends on the type of business, how important the trademark is going to be, and the strength of the trademark. If it's
really distinctive, it's easier to apply for a trademark; if it's not, it's really hard to get one without showing that customers know your mark in the marketplace.

I believe it also depends on the strength of the brand. I don’t see a use in spending the money to trademark a logo if they are not even big enough for anyone to care about. Brian speaks about the strength of the trademark which might be hard to figure out. It really depends on the trajectory of the brand itself and whether the owners see it exploding into a well-known brand.

6.   How long does it take for an application for a fashion trademark to be approved?
Depends - if it doesn't get opposed by a third party, likely in 4-8 months (in Canada). If it becomes opposed or the examiner thinks it is unacceptable, it can be much longer.

7.   How long do fashion trademarks last?
Trademarks have no set expiry date; but if you don't use it, it is vulnerable to an expungement action from a third party to get rid of it.

Perhaps this is different in Canada, but according to the textbook, “Initially, the trademark is valid for 10 years, but the owner can renew it for an unlimited number of 10-year terms long as the mark is still in use” (Page 509). It really depends on the strength of the brand and whether it has become well-known in the 10 years it has been in use. If after 10 years, it is still obscure, then I agree someone else should be able to use the logo without fear of infringement.

8.   Are fashion trademark rights transferable?
In Canada, yes. I think there are some restrictions in the US, but I'm not sure what they are.

9.  When starting a business, should I license my company as LLC or INC?
This is not my area of expertise; I can't help since my work is primarily in the

10.  What are the legal advantages and disadvantages of a sole proprietorship?
This is something you can probably google, but off the top of my head, the advantages are simplicity and ease of creation, disadvantages are no liability protection, tax disadvantages and inability to persist after the death of the sole proprietor.