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On September 10, 2014, JPT Group, owner of the iconic American fashion brand Bernardo, filed suit in the Southern District of Texas alleging that Old Navy infringed two of Bernardo’s design patents for sandals.
Bernardo owns two design patents for the ornamental design of its sandals and alleged that Old Navy misappropriated and slavishly imitated its patented designs as shown in the following side-by-side comparison:
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Although Old Navy contracted with suppliers to produce the sandals outside the United States, Old Navy subsequently sold the sandals in the United States during the spring and summer seasons. Bernardo therefore alleged that Old Navy has infringed the design patents under 35 U.S.C. §§271 through the sale, offering for sale, and/or importation of the sandals. Along with damages for infringement, Bernardo asked the Court to enjoin Old Navy from further infringement of the patents, and to award interest, costs, attorney’s fees, and treble damages for willful infringement.
This case is yet another example of fashion designers attempting to protect their designs through various intellectual property schemes. As previously discussed by Arent Fox, along with design patents, companies may protect the nonfunctional aspects of their designs through trade dress. Each of these schemes presents certain advantages and disadvantages which companies should consider before seeking protection and/or attempting to enforce any existing rights.