Debevoise & Plimpton counsel Megan K. Bannigan addressed branding in the fashion industry at the 10th annual McCarthy Institute Symposium. Focusing on trademark law and its challenges, the event brought together industry-leading practitioners and scholars to discuss dynamic intellectual property and branding issues.

Following the symposium, Ms. Bannigan synthesized a list of key takeaways, detailing three points related to trade dress that all companies should keep in mind:

• It is critical to be able to clearly and consistently define any trade dress you are looking to protect, including in cease and desist letters, registration applications and litigation pleadings. Failure to do so may impact a company’s ability to later enforce the trade dress and could weaken a claim for secondary meaning.
• Evidence of third-party use of a design in the marketplace can be strong evidence to defend against a trade dress infringement claim. You will also need to show that the third-party designs were well promoted and/or recognized by consumers, which can be achieved through third-party subpoenas asking for evidence of sales and/or advertising of the designs at issue.
• Ensure that marketing teams and social media influencers are not promoting substantive content that could later undercut your trade dress rights. For instance, they should engage in “look for” advertising that highlights elements of your claimed trade dress and be careful not to overly tout the functionality of a product.

Ms. Bannigan is a member of the Litigation and Intellectual Property & Media Groups focusing on trademarks, trade dress, copyrights, false advertising, rights of publicity and other disputes. She represents clients across a range of industries, including consumer products, cosmetics, entertainment, fashion and luxury goods, financial services, food and beverage, pharmaceuticals, professional sports and technology.

Debevoise & Plimpton is a premier law firm with market-leading practices, a global perspective and strong New York roots. We deliver effective solutions to our clients’ most important legal challenges, applying clear commercial judgment and a distinctively collaborative approach.