A case study on Trademark Protection in Fashion: Temu’s Copy of Telfar’s Shopping Bag
Recently, I was scrolling on Instagram when I spotted an advertisement for what I believed was a Telfar bag…until I realize that the ad was posted by Chinese-based fast fashion brand, Temu. The “Maijia” faux leather bag is shaped like the iconic Telfar puffer shopping bag with similar straps. However, Temu did not stop there. The company also placed an embossed logo on the bag that is nearly identical to that of the Telfar brand, with the addition of a slight tweak that gives the logo 2 spikes on the top and bottom of the logo in addition to the spikes on the side.
When I realized the selling price of the Temu bag and the fact that the company has allegedly sold over 169,000 of these bags, I knew I had to chime in on this issue.
Background of the Brands
Liberian-America fashion designer, Telfar Clemens, founded the eponymous Telfar brand in 2005 in New York City. The Telfar brand has taken the fashion world by storm by positioning itself as a notable luxury brand that remains inclusive. Their tagline, “Not for you - for everyone,” appropriately describes the brand, as you cannot walk out of your house, go to the grocery store, or peruse through a magazine without seeing everyone and anyone rocking their favorite Telfar bag. Though the tote bag design is nothing new to the marketplace, its staunch community and innovative branding make the Telfar brand stand apart from the rest.
The trademark application for the Telfar logo for handbags was filed on June 25, 2021. *Note: The mark is not registered as of the date of this article due to a dispute with another famous brand for another class of goods, but is now likely in the final stages of receiving its trademark registration for handbags. Nevertheless, certain common law trademark rights attach once the owner begins using the mark in commerce.
Temu is owned and operated by the Chinese-based company, PPD Holdings. The e-commerce site went live in the United States in February 2023. Since its launch in the U.S., Temu has become a major player in the fast fashion industry. Temu is making a name for itself by providing a myriad of products, including clothing and household items at unbeatable prices, with some selling as low as a few cents. The brand has come under fire for its nature of copying other brands and has ironically been sued by Shein - another popular fast fashion brand that is often in the spotlight for copying the likes of other brands and selling them at astronomically low prices.
Gaps in Intellectual Property Rights for Fashion Brands
You may have heard of brands attempting to co-opt the movement that Telfar has created with its shopping bag, (i.e. Guess’s failure of an attempt to create its own logo-embossed tote bag in 2021). In this case, it wasn’t the law, but the negative press Guess received from Telfar’s loyal following, that led to the takedown of Guess’s tote bag.
“The laws of the United States do not provide intellectual property protection for unoriginal fashion designs.”
As a fashion attorney, I am glad to see that the court of public opinion stepped in where there is a large gap in protection for fashion designs. The laws of the United States do not provide intellectual property protection for unoriginal fashion designs. This means that the color, cut, or construction of a garment and other similar items cannot be reserved exclusively for one designer. The biggest reason for this is the utilitarian nature of many aspects of fashion, ex. clothing to cover the body, shoes to protect the feet, handbags to carry things, etc. Only original, non-useful aspects of a fashion design may be protected by intellectual property rights.
The Importance of Trademarks for Fashion Brands
Despite the lack of intellectual property protection fashion designers have in their designs, they have something that may prove to be even more valuable to them – their trademarks. A trademark can be a word, logo, slogan, tagline, hashtag, color, smell, packaging, or non-utilitarian design, that exclusively represents a brand. For example, when you see the check swoosh or hear, “Just do it”, you think of Nike. When you have a federally registered trademark, you gain exclusive rights to use your mark in connection with the goods and/or services you provide throughout the United States. You can also use your U.S. trademark application to apply for trademark rights in other countries.
Trademarks Protect Brands and Consumers
Though there are many reasons why trademark protection is important and vital for fashion brand owners, the number one reason why the federal government promotes and allows businesses to gain exclusive rights to use certain source identifiers with their brands is to protect consumers. Trademarks aid consumers in associating brands with certain goods, services, and qualities. The proper use of trademarks also prevents consumers from being misled about the source of a particular good or service.
How to Enforce Trademark Rights
Trademark protection does not end at simply registering the mark. Brand owners must also enforce those rights when necessary. There are multiple options for brand owners with a federally registered trademark who believe they have experienced trademark infringement. The most conservative route is to first issue a cease-and-desist letter putting the alleged infringer on notice that they are infringing on the brand, demanding them to stop, and possibly seeking payment for the infringement. A brand owner who has a federally registered trademark may also work with online platforms to have the infringing ads, products, and even the entire social media page taken down. One often overlooked means of trademark enforcement is to record your trademark registration with the U.S. Customs and Border Protection to stop infringing goods from making their way into U.S. borders. This means the federal government will essentially help you enforce your federally registered trademark rights. Of course, if it’s worth the time and money to the brand owner, they may file a trademark infringement lawsuit in federal court and request an injunction to stop further sales of their alleged infringing goods and seek damages for any past infringement.
The “Confusingly Similar” Test
If a brand owner sues an alleged trademark infringer, the courts will usually apply what is called the “confusingly similar” test to determine whether the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source. Though this may seem like an easy call, the courts often use a 13-part analysis, called the DuPont Factors to determine trademark infringement. Some of those factors include the similarity of the marks, the similarity of the goods and/or services provided under the marks, the prior trademark’s level of recognition and fame, and the occurrence of any actual confusion.
“The key question is whether the marks are too confusingly similar for consumers to differentiate between them and not whether they are exactly identical.”
The confusingly similar analysis protects trademark owners in cases where other brands may try to tweak small elements of a trademark owner’s mark for their own purposes. This is why simply spelling your brand name slightly differently where it still sounds the same as another brand, or slightly changing the logo of another brand to pass it off as their own will likely land a brand in the heat for trademark infringement, especially when offering similar goods or services as the original owner. The key question is whether the marks are too confusingly similar for consumers to differentiate between them and not whether they are exactly identical.
Protect Your Brand
Though fashion brands may not have the full extent of intellectual property protection we’d like them to have, there are aspects of intellectual property protection that are well worth investing in. In an overcrowded marketplace focused on brands that are consistently exploring innovative ways to remain relevant and unique, it is imperative that businesses own and protect their brand with federal trademark registration. It is also just as important to monitor and aggressively enforce those rights to protect their brand against other companies from reaping the benefits of the hard work the original brand owner has invested to establish their positioning in the marketplace.
Disclaimer: The content shared on the Your Fashion Attorney™ blog is for educational purposes only and should not be received as legal advice. No attorney-client relationship is created between The Cloud Law Firm PLLC (the firm) unless you have entered into an engagement agreement with the Firm.
