Uniform Design Trademark Law?

[USAgent]

Does anyone know if it is possible to get a trademark on a uniform design using public domain material? For instance, if Adidas designed a football uniform which incorporated the state flag of Vermont into it, and then Champion wanted to do the same for another Vermont team, could Adidas claim a copyright or trademark? Because it would be hard to demonstrate that another flag jersey would be dissimilar enough to not be an infringement on the original idea, even though the flag design is public domain-ish. Any Trademark Law experts out there?

 

Apologizing in advance if this is in the wrong forum.

[dont care]

in your particular example no, and in most examples it would be a no. There are multiple times that teams wear similar uniforms and nothing has come of them. Nebraska and Wisconsin are very similar, Kansas state has only changed the blue from the Cowboys uniforms to blue, if what the color rush leak is to be believed Baltimore will have a Maryland flag themed uniform like under armour has done to Maryland. And then you got Iowa legit copying steelers uniforms to look exactly like them. 

[USAgent]

Thanks for the answer, dc.

Hey, I don't mean colors in general. A color scheme cannot be trademarked so much. I'm talking about a DESIGN, specifically one which uses public domain material. If Nebraska used the flag in their Nike uniforms, I don't think Wisconsin could also use the Nebraska flag in their Adidas unis so easily, but that's my question. What is the specific law, cited, about things like these?

 

And, the Nike Color Rush unis for the Ravens are a verified FAKE, they will NOT be using the MD flag.

[rsaline]

I can't imagine there are specifics about this, you would probably start getting into case law situations. But if a situation were to arise in Vermont with two suppliers using similar designs incorporating the flag, there probably couldn't be any intellectual property claims since the flag design is property of Vermont or even public domain. Another aspect would be that once the uniform design is given to the team, it becomes their property, not the manufacturers. 

[Mingjai]

I'm a non-practicing JD working as an economist for intellectual property litigation, so nothing I saw constitutes legal advice, etc., but basically, in your example Adidas could potentially have Federal causes of action under both trademark law and copyright law.

 

Copyright protection attaches when an original work becomes fixed in tangible medium and copyright infringement occurs when the alleged infringer creates a copy of the original work that is substantially similar to the original. Here, the copyright claim is weak, because the only originality is the arrangement of public domain material, so the Adidas is unlikely to get much out of any suit on a copyright basis.

 

Trademark rights attach when a mark (including trade dress) is used identify a good or service is used in commerce, and trademark infringement occurs the alleged infringer uses that mark in a way that would likely cause consumers confusion over the origin of the goods or services. While copyright requires originality in the composition of the work, trademark only requires the owner to be the first to use it in commerce. Here, Adidas (or potentially the university) would have more of a claim of infringement depending on how likely consumers are to confuse the two designs.

 

I'm vastly oversimplifying here--I would suggest reading at least these articles:

http://www.wikiwand.com/en/Copyright_law_of_the_United_States

http://www.wikiwand.com/en/Copyright_infringement

http://www.wikiwand.com/en/United_States_trademark_law

http://www.wikiwand.com/en/Trademark_infringement

[guest23]

20 minutes ago, Mingjai said:

I'm a non-practicing JD working as an economist for intellectual property litigation, so nothing I saw constitutes legal advice, etc., but basically, in your example Adidas could potentially have Federal causes of action under both trademark law and copyright law.

 

Copyright protection attaches when an original work becomes fixed in tangible medium and copyright infringement occurs when the alleged infringer creates a copy of the original work that is substantially similar to the original. Here, the copyright claim is weak, because the only originality is the arrangement of public domain material, so the Adidas is unlikely to get much out of any suit on a copyright basis.

 

Trademark rights attach when a mark (including trade dress) is used identify a good or service is used in commerce, and trademark infringement occurs the alleged infringer uses that mark in a way that would likely cause consumers confusion over the origin of the goods or services. While copyright requires originality in the composition of the work, trademark only requires the owner to be the first to use it in commerce. Here, Adidas (or potentially the university) would have more of a claim of infringement depending on how likely consumers are to confuse the two designs.

 

I'm vastly oversimplifying here--I would suggest reading at least these articles:

http://www.wikiwand.com/en/Copyright_law_of_the_United_States

http://www.wikiwand.com/en/Copyright_infringement

http://www.wikiwand.com/en/United_States_trademark_law

http://www.wikiwand.com/en/Trademark_infringement

 

To expand on your point, only the trademarks/logos of the actual manufacturers are really the only aspects of any design that can be legally protected. A perfect example is the nike/broncos redesign. While the design itself was unique and proprietary at the time, the template immediately became copied by just about every uniform manufacturer without threat of legal consequence. There are countless examples in fashion/design/apparel where designs are co-opted by other manufacturers. Take a look at casual sneakers and see how many times the nike dunk, chuck taylor, or vans slip-on have been copied by mainstream manufacturers time and time again.

[Mingjai]

1 hour ago, guest23 said:

 

To expand on your point, only the trademarks/logos of the actual manufacturers are really the only aspects of any design that can be legally protected. A perfect example is the nike/broncos redesign. While the design itself was unique and proprietary at the time, the template immediately became copied by just about every uniform manufacturer without threat of legal consequence. There are countless examples in fashion/design/apparel where designs are co-opted by other manufacturers. Take a look at casual sneakers and see how many times the nike dunk, chuck taylor, or vans slip-on have been copied by mainstream manufacturers time and time again.

 

I don't completely buy this--if the Broncos/Nike sought trademark/trade dress protection over the unique design aspects of their uniforms through a Federally-registered trademark, they might have had something enforceable, so long as they could prove that the designs themselves indicated the source of the product. Too late now, of course, as the doctrines of laches/estoppel would prevent either from having any enforceable rights.

[USAgent]

This is GREAT stuff guys!  Especially, Mingjai, thank you for the tonnage of info. Here's what I needed it for:

http://www.baltimorebeatdown.com/2016/4/26/11509224/confirmed-nike-color-rush-leak-is-fake

[guest23]

1 hour ago, Mingjai said:

 

I don't completely buy this--if the Broncos/Nike sought trademark/trade dress protection over the unique design aspects of their uniforms through a Federally-registered trademark, they might have had something enforceable, so long as they could prove that the designs themselves indicated the source of the product. Too late now, of course, as the doctrines of laches/estoppel would prevent either from having any enforceable rights.

 

I follow the apparel industry quite a bit and haven't seen a manufacturer really be able to enforce what is in essence fashion design. I'm sure there are examples out there of egregious copies or near-counterfeits but most apparel designs fall within the area of being vaguely similar or generic enough to evoke another's signature design without being an exact copy. If a party is found legally to be infringing they typically make a few minor design tweaks to satisfy the judgement but the designs often remain the same.  skechers entire business model is predicated on knocking off more expensive designers.

[Mingjai]

1 hour ago, guest23 said:

 

I follow the apparel industry quite a bit and haven't seen a manufacturer really be able to enforce what is in essence fashion design. I'm sure there are examples out there of egregious copies or near-counterfeits but most apparel designs fall within the area of being vaguely similar or generic enough to evoke another's signature design without being an exact copy. If a party is found legally to be infringing they typically make a few minor design tweaks to satisfy the judgement but the designs often remain the same.  skechers entire business model is predicated on knocking off more expensive designers.

I agree with you that in practice, designers have had a hard time using trademark to enforce design elements. But when design elements aren't purely functional (e.g., the swoosh tips of the Broncos pants), and the designer has the foresight to file for a Federal trademark on the design including those elements, and those design elements become strongly associated with that designer,  I would still think that those elements would be enforceable. The Second Circuit has at least ruled that red-color soles used by Christian Louboutin are an enforceable trademark. See Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 696 F.3d 206 (2d Cir. 2012).

[guest23]

I remember that case now that you mention it. It really seems like a case by case basis and the party that that's being infringed upon seems to have a pretty large burden of proof. I'd be willing to bet that if nike made that tapered stripe design an essential element across their football uniform catalogue like adidas does in soccer with their 3 stripes they would have a strong case for trademarking uniform design(s). The problem so many design elements are ubiquitous with very originality (northwestern stripes etc.) that they are essentially public domain.