A dispute between athletic apparel company Lululemon and retailer Costco may prove to be a roadmap for other trade dress and design patent infringement cases. Steven D. Lustig weighed in on the case in an interview with Managing IP for a recent article.

Costco is selling products which Lululemon alleges look similar to its own, and articles in The Washington Post and The New York Times have pointed out these similarities. Lustig noted the evidence-based nature of trade dress cases and the fact that Lululemon has registered the products at the center of the dispute. “That at least shows they have a certificate saying their trade dress is non-functional and protectable,” Lustig said. “That’s very advantageous. In many trade dress cases I’ve seen that have failed, the plaintiff has not had a registration.”

The newspaper articles highlighting the products could also work in Lululemon’s favor, Lustig said. “Just based on the complaint, Lululemon seems to have an enviable position because they seem to have a lot of evidence showing that their products are recognised by the public and that Costco is trying to copy them,” he said.

Lustig added that the plaintiff has gone to “great lengths” to show pictures of the products and to point out elements of the design which are ornamental and not functional. “I don’t know if this is going to be a trailblazing case, but I can see it being held up as an example of how to assert a trade dress case in the context of clothing and what you need [to establish] out of the gate to make your best case,” he said.

Five years after registering a mark, trademark owners can file an affidavit with the United States Patent and Trademark Office affirming that it has been continuously used in commerce. Lustig noted that this five-year window is not yet up, leaving Costco with the option to challenge the trade dress by saying it’s functional and should be cancelled. As the case progresses, IP owners may want to note how the outcome could inform their own trademark strategy.

Read the full article here: Lululemon complaint could set trade dress example: counsel (Subscription is required.)