What the Deckers/Quince Patent Lawsuit Failed to Resolve — and What Brands Can Do to Fight Back

For fashion brands dealing with “dupes culture,” Willie Stroever, the co-chair of the intellectual property department at Cole Schotz, has some advice.

“The lawsuit highlights the need for fashion brands to be very clear about what is distinctive about their products,” Stroever said. He explained that the jury verdict indicates that a product might have extensive sales and renown but still not have acquired that distinctiveness — either through concept or extended use, advertising, sales, and other metrics — that qualifies for both trade dress and trademark protection. Moreover, the Deckers/Quince case “tells us that even a design patent may not be enough to prevent close competitors,” he said of the outcome.

“Fashion brands looking to create protectable rights in their product designs need to be aggressive not just in their enforcement, but also in creating the connection between the consumer and that specific design element,” Stroever said. “Sales and general advertising are helpful, but specific advertising and highlighting of the elements of the brand they want to make distinctive is critical.” He said in advertising, this often called “look for.” That phrase refers to a strategy in marketing where consumers are trained to recognize or identify a unique element that indicates or proves a brand’s identity. That element can be specific packaging, a design code or even color pattern.

Stroever expects that Deckers will likely appeal the decision. “There is winning in court and winning in the marketplace. Typically, one of the tools fashion brands have in their arsenal is deeper pockets and an ability to see litigation through to the end without caving,” he said, adding that Deckers may continue to challenge Quince in other jurisdictions and on other issues. That would be similar to Adidas’ positioning against some of their closer competitors, he noted, adding that “Quince may have won the battle, but Deckers may be planning a longer war.”

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