Managing: Legal Issues
Trademarked Looks: What's a Jeweler To
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
- 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.
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
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
- 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.