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January 2000

Managing: Legal Issues

Trademarked Looks: What's a Jeweler To Do?

You need to consider the risks involved in carrying jewelry you know may copy an original design or imitates a look that has become established in consumers' minds as belonging to one designer (such as David Yurman).

  • In deciding whether a product is inherently distinctive, you should consider several factors:
  • The overall appearance of the product, including all features that could be considered unusual or striking. How are the elements combined?
  • The designer's intent in using consistent design elements so the look is identified with him or her.

The extent to which others know the jewelry and the unsolicited media coverage it has received.
No one of these factors establishes conclusively that a product's look is distinctive. But the more of them present and the stronger each is, the more likely a jury would judge it distinctive.

Not Inherently Distinctive, But Protectable Anyway?

After considering these factors, if you don't think a designer's look is distinctive, you still need to consider whether it may be protectable because of the efforts of the designer and the media. The analysis isn't that different from the one needed to determine whether a look is distinctive. But the focus is not so much on the jewelry as on what the designer has done to establish the jewelry's identifiable characteristics as his or hers in the minds of consumers. To determine whether a designer's look has acquired this protectable quality, consider these factors:

  • The length of time and the exclusivity of the use of the particular look. A designer who has created a unique look and has been the only one – or one of very few –  to use it for a long time is more likely to have earned protection.
  • The extent to which a designer has advertised and promoted a look. Legal protection can't be acquired without substantial advertising. At the Yurman trial, lawyers produced evidence the company spent more than $5 million yearly in advertising. With co-op advertising added, the figure nearly doubled.
  • The designer's sales success. Many prominent retailers testified about Yurman's success.
  • The amount of unsolicited media coverage the designer and his jewelry have received and the extent to which the designer's look has been copied by other designers and manufacturers.

Legal Implications

Once you've determined a designer's look is distinctive or is identified as his or hers by virtue of successful marketing, then you need to think about the legal implications of your actions if you choose to sell jewelry that imitates the designer's look. This should help you decide whether a piece or a line of jewelry you're about to sell may get you drawn into a trademark infringement lawsuit.
According to lawyer Maxim Waldbaum, who represents Yurman Designs Inc. and was Yurman's lead counsel at the trial, there are practical, commonsense ways to avoid problems:

  • Be sure you know and can document where the jewelry you stock came from. For the most part, trademark and copyright lawsuits are intended to stop the manufacturer of suspect jewelry rather than the retailer who sells it to the public. If a retailer can identify the source of the allegedly infringing goods, there's little reason for a designer's legal team to hold that merchant in a lawsuit. But if a retailer sells jewelry a designer believes infringes a protectable copyright or trademark and the retailer can't say where the goods came from, the retailer will be the primary defendant.
  • Don't ignore inquiries or more formal cease-and-desist letters from a designer or manufacturer or their attorneys. A cease-and-desist letter is not a court document, does not establish or prove you or your supplier have done anything wrong and has no legal force. But it's an indication the designer is very serious about protecting property rights. Give such letters and refer all written or verbal inquiries to your attorney immediately. Continuing to sell goods after you have been told they infringe on a designer's copyright or trademark and failing to raise the issue with your attorney can be used against you if the case ever goes to trial.

by William H. Donahue



Copyright © 1999 by Bond Communications.



 

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