Fashion Collaborations: Key Legal Considerations for Brands

Unlikely collaborations in the world of fashion are nothing new. Back in the 1930s, for instance, Italian designer Elsa Schiaparelli worked with Spanish artist Salvador Dalí to produce Surrealist dresses that took the art and fashion worlds by storm. As fashion brands increasingly expand into new territories – toys, appliances, furniture, and skincare products, to name a few – the trademark implications of cross-industry and cross-brand collaborations have become more pressing. In particular, the blending of company identities wrought by collaborations may substantially impact collaborating brands’ positions in infringement, dilution, and naked licensing suits, while also raising the larger question of whether traditional trademark confusion tests fit neatly in a market full of cross-brand partnerships. 

Going forward, fashion companies should keep close watch on how they market their collaborations to customers while maintaining brand identity – and all companies will have to monitor how collaborations of increasing frequency and scale will affect the basic assumptions and approaches of trademark law.

Fashion Collaborations Are in Vogue

High-profile fashion collaborations have been growing in both volume and sophistication in recent years, as brands seek out new, often unlikely partners to maximize their exposure, build hype, and reach out to audiences beyond their traditional bases. Based on the popularity of many of these new product lines, brand collaborations represent a trend that is here to stay. 

To breathe new life into their brands and bring in different customers, fashion houses sometimes turn to companies from outside the world of fashion. For instance, in 2020, Levi’s partnered with toy manufacturer LEGO Group to release LEGO brick-inspired Levi’s clothing and accessories. Collaborating with the children’s toy company did not just give Levi’s the opportunity to capitalize on consumers’ nostalgia; jackets, hats, and bags in the collection featured sewn-in LEGO baseplates, allowing for personalization using the toymaker’s actual bricks. The partnership opened up an innovative – and highly coveted – opportunity for buyers to express their individuality. The message was clear: consumers should expect the unexpected from the revitalized Levi’s and LEGO brands, each with new range beyond its classic offerings. 

The hit collaborations do not stop there … 

Fendi and Hiroshi Fujiwara and Pokémon: In December 2023, Fendi announced a three-way collaboration with Japanese “godfather of streetwear” Hiroshi Fujiwara and videogame franchise Pokémon to create a line of bags, leather goods, key charms, textile accessories, brass jewelry, and apparel, featuring designs overlaying Pokémon’s Dragonite character on Fendi’s FF jacquard logo. This tripartite partnership demonstrates the power of joining together a top fashion house, a legendary streetwear designer, and a global gaming media giant to create unique and highly desired products.   

Issey Miyake and Dyson: The late Japanese fashion designer Issey Miyake turned heads back in 2007 by collaborating with vacuum giant Dyson to create a limited-edition handheld vacuum cleaner. Miyake continued this partnership by collaborating with Dyson’s industrial designer to create a new clothing collection titled “The Wind,” which debuted at Paris Fashion Week. Despite coming from disparate design contexts, both parties found inspiration and publicity by joining forces to introduce their brands to new groups of consumers.

Barbie and Balmain:  In 2022, Balmain announced a limited-edition collection in partnership with Mattel’s Barbie, integrating Barbie’s signature pink into a line of jackets, handbags, and t-shirts. The companies also broke new ground together by launching three NFTs of Barbie avatars wearing digital versions of the real-life clothing. The partnership allowed Balmain to capitalize off of Barbie’s powerful, global recognition and Mattel to further cement the status of Barbie as a fashion icon in both her world and ours.

Supreme and . . . everything: Supreme, the street- and skate-wear juggernaut has long been a trendsetter in fashion co-branding. Previous collaborations have included Supreme’s unmistakable red and white box logo on Stratocaster guitars, Cash Canon “money guns,” Kermit the Frog merchandise, Advanced Elements kayaks, Everlast boxing gloves, Louisville Slugger baseball bats, Louis Vuitton leather goods, Honda dirt bikes, and MTA MetroCards. Consumers have flocked to acquire these co-branded objects, cementing Supreme’s status not just as a streetwear giant, but also as a leading maker and marketer of so-called “hypebeast” collectibles. 

Perhaps less intuitive, but increasingly common, are collaborations between companies that are adjacent to one another. For example, fast fashion giant H&M has consistently collaborated with high-fashion giants such as Balmain, Karl Lagerfeld, and Versace to create limited-edition collections of ready-to-wear clothing and shoes. Often, these lines incorporate the signature style or motifs of the high-fashion brand while remaining at a lower price point for H&M consumers. These partnerships seem to fly in the face of the conventional wisdom that high-fashion companies should prioritize exclusivity. But it is hard to ignore the immense success of these campaigns. The Balmain x H&M collection, for example, drew lines around the block and sold out within hours.

Collaborations between fashion companies unlock opportunities for bold – and potentially risky – decisions in marketing and design. In 2021, for instance, Gucci teamed up with The North Face to launch a line of clothing and accessories that blend the latter’s reputation for high-quality outdoor wear with the former’s distinctive 70s-inspired prints and motifs. Media coverage of the line celebrated the merging of the brands’ distinct aesthetics and reputations, and the two revisited the collaboration several more times. That same year, sportswear company Champion and handbag house Coach formed a collaboration in which the two companies released a line of jackets, sweatshirts, joggers, and handbags that integrated Champion’s crossed “C” logo into Coach’s signature monogram “C” pattern. 

While many other collaborations feature designers whose names or logos appear together, but separately, on the partnered products, the Champion x Coach collaboration took it a step further by actually blending the two companies’ most recognizable branding, creating a new fused identity in the minds of consumers.

Collaborations between companies operating in adjacent industries have been successful also, such as Peloton’s recently announced collaboration with lululemon. In September 2023, Peloton, which already sold its own Peloton-branded clothing, and lululemon, which already offered fitness classes, announced a five-year partnership in which lululemon became Peloton’s primary athletic apparel partner and Peloton became lululemon’s exclusive fitness content provider. As part of the arrangement, some Peloton instructors became lululemon brand ambassadors, as well. This collaboration demonstrates a key incentive of fashion partnerships between companies in adjacent spaces: it is easier to market products across the overlapping customer bases due to pre-existing synergies.

The Tiffany x Fendi partnership, in which the two companies paired up to offer “baguette” handbags in the famous Tiffany Blue, may be seen as another example of this sort of synergistic collaboration. 

These co-branding endeavors between companies in adjacent industries may be seen as part of the larger trend of fashion and beauty brands reinventing themselves as “lifestyle brands,” which sell a range of traditionally unrelated products under the same mark all aimed at promoting a specific lifestyle. 

Fashion Collaborations x Trademark Law

While brand collaborations offer many benefits from a business and marketing perspective, they may also present larger trademark risks for the companies involved. At least one would-be collaboration has already ended in litigation, including claims for trademark infringement, counterfeiting, and abandonment. Though the court there granted the defendant summary judgement on its trademark infringement counterclaim, see LPD New York, LLC v. Adidas America, Inc., 2022 WL 4450999 (E.D.N.Y.), the larger trademark risks and implications of fashion collaborations remain somewhat uncertain, as collaborations at the scale and volume of the above examples are still relatively new. 

But there are at least three key ways that collaborations may affect a brand’s larger trademark portfolio. Namely, collaborations may change how courts weigh the traditional consumer confusion factors in an infringement action, weaken the position of some dilution plaintiffs seeking to prove the strength of their marks, and pose new challenges to brands seeking to avoid naked licensing. The remainder of this article will address the first topic: how collaborations may change consumer confusion analyses, while Part II will address dilution and naked licensing.

Trademark Implications of Collaborations: Changing Consumer Confusion

Unlikely co-branding collaborations may alter how consumers respond to potentially confusing uses of a mark.  At its core, the Lanham Act is a consumer protection statute.  The Act prohibits, among other things, uses of a trademark that are likely to cause consumer confusion, mistake, or deception as to “affiliation, connection, or association,” with or “origin, sponsorship, or approval” of goods or services. While the Lanham Act’s underlying goal of protecting consumers should, in theory, remain constant, consumer vulnerability to the deception the Lanham Act seeks to prevent may shift with changes in branding practices and related changes in consumer expectations.  

In a trademark infringement suit, the key question is often whether consumers will be confused by the defendant’s use of a mark similar to that of the plaintiff. Federal courts assessing likelihood of confusion all use some version of the Second Circuit’s Polaroid factors, looking at (1) the strength of the plaintiff’s mark; (2) the degree of similarity between the two marks; (3) the proximity of the products; (4) the likelihood that the owner will bridge the gap; (5) evidence of actual confusion; (6) defendant’s good faith in adopting the mark; (7) the quality of defendant’s product; and (8) the sophistication of the consumers. See 287 F.2d 492, 495 (2d Cir. 1961). These factors are non-exhaustive, and courts can take other variables into account depending on the specific facts of the case. See Hamilton Int’l Ltd. v. Vortic LLC, 13 F.4th 264, 272 (2d Cir. 2021). In the context of collaboration culture, and the shift in consumer expectations that accompanies it, factors three, four and eight may take on particular relevance; it is key that brand holders pay close attention to these factors and approach them in a nuanced manner.

Factors 3 and 4: Proximity of Products and Bridging the Gap

Fashion collaborations may impact both the third and fourth confusion factors. For the third factor, the proximity of the products, the effect is more direct. As collaborations continue to make connections between fashion brands and other industries like home appliances, toys, and food products conventional, courts may start to find companies in those industries proximate to the fashion world. While home appliances and high-end fashion may have once seemed to have nothing to do with each other, collaborations like Issey Miyake and Dyson’s teach consumers that products like vacuums and dresses may not be so far apart after all and make it more difficult to argue that the two could not be thought of as proximate. 

The connections forged by collaborations may also have major implications for the fourth confusion factor, as they make it increasingly plausible that a fashion company might bridge the gap into almost any industry, even one that initially seems unrelated. Under factor four, courts look at how likely it would be for the trademark owner to enter into the market of the alleged infringer.  For example, in the case The Sports Authority v. Prime Hospitality Corporation, 89 F.3d 955 (2d Cir. 1996), the Second Circuit held that it was unlikely that a sporting goods and apparel retailer would move into the sports-themed restaurant industry because there was no evidence indicating that consumers would expect the apparel company to bridge that gap.

Historically, the probability of a fashion designer entering the restaurant industry was slim to none. But with collaborations like Fendi x Fujiwara x Pokémon or Supreme’s many collaborations, it is becoming more common for companies to cross into seemingly disparate industries. 

Parties in trademark infringement suits are already making arguments like this. For instance, Mattel, the toymaking company behind Barbie, argued in its opposition to Burberry’s application to register BRBY for bags, luggage, and clothing that, because the Barbie mark has been used “in connection with handbags, overnight bags, luggage, a broad range of clothing and apparel, footwear, and headwear, . . . [c]onsumers would be likely to wonder if, or assume that, [Burberry’s] Goods are licensed by or affiliated with [Mattel].” It is unlikely that this argument about cross-product expansion would have had the same force ten or fifteen years ago, particularly since there is no indication that Burberry’s products would have been marketed to children (or adults shopping for children), who are the most likely audience for Barbie dolls.

With the rise of collaborations, analysis of the likelihood of bridging the gap becomes far less clear cut. This ambiguity leaves room for trademark holders to use unconventional collaborations offensively to increase the scope of their protection by arguing that they can bridge the gap into almost any market. Though some courts may be reluctant to find a likelihood of bridging the gap across two seemingly unrelated industries, as collaborations proliferate so too do concrete examples for future plaintiffs.

As they do, prior case law and assumptions about which industries are proximate or overlapping may be of less importance to a court considering whether a fashion company would be likely to bridge the gap into, say, gaming. Rather, the company’s prior collaboration conduct and the prominence of other collaborations in the industries at issue would – and should – play a significant role in the analysis.

Factor 8: Sophisticated Consumers

Factor eight of the Polaroid test, meanwhile, considers the sophistication of consumers – specifically, how likely it is that consumers will identify differences in otherwise similar trademarks. While someone buying an inexpensive pack of gum may not care much about what she is buying (and is thus more likely to be confused by similar gum packaging), a purchaser of expensive industrial equipment or luxury handbags is likely to pay attention. The creation of authorized collaborations across so many categories may entrench consumers’ belief that each use of a company’s trademark, or of a similar one, is authorized by or originates with the rightsholder. 

This puts trademark owners in a stronger position to argue that consumers are confused by a potentially infringing use. For instance, after consumers have seen the Levi’s and LEGO collaboration, they may be more likely to assume in the future that any toy replicating designs similar to Levi’s is part of a new authorized collaboration – rather than thinking that the toy is unlikely to be from a denim clothing company, they may be primed to believe that Levi’s is likely the source. 

If the collaboration is not authorized, Levi’s has a stronger position than before its LEGO partnership in proving consumer confusion. Put in the language of the Polaroid test, while collaborations may appeal to consumers with a sophisticated fashion or marketing sense, those consumers may become less “sophisticated” at discerning trademark infringement because they come to expect a trademark’s protection to cover any class or market. 

But while the existence of unusual collaborations may help plaintiffs prove confusion, it may cut another way as well. A marketplace teeming with unexpected trademark uses could actually train consumers to become more discerning, resulting in less confusion. For example, where a customer might previously have given only a cursory glance at the general style of a product before buying it, the increase in collaborations might make consumers more aware of brands in general and train them to look more closely for logos or tags before purchasing a product. To borrow a phrase from Justice Kagan, who once observed that “we’re all textualists now”: perhaps, in this age of increasing, high-profile, and surprising collaborations, we are all hypebeasts now. 

These collaborations also may make consumers aware of brands in industries they do not usually think about, such as the consumer of Issey Miyake’s fashion products who now knows and cares about vacuum cleaners. This would make the consumer more generally “sophisticated” and less likely to be confused by products similar to the trademark holder’s. If another company began making similarly designed vacuums, for example, it may be able to argue that the high profile, expense, and branding of the Miyake x Dyson line means a consumer is not likely to accidentally buy its goods instead. These contrasting ways in which collaboration culture may impact consumer sophistication underscore the need for nuanced, context-rich analysis of the likelihood of confusion factors.

One possible consequence of these ambiguities surrounding the likelihood of bridging the gap and the contrasting ways the pervasiveness of collaborations could impact consumer sophistication is that courts may place even more value on factor five of the likelihood of confusion analysis: evidence of actual confusion. When guessing at consumer expectations and mapping those expectations onto existing law has become even more complicated by the shifting collaboration landscape, why not rely on evidence of consumer perceptions as to source?  This means that examples of actual confusion and, relatedly, consumer survey evidence, which are already viewed as particularly valuable evidence in the likelihood of confusion inquiry, may become all the more important for brands in trademark litigation.

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Buzzy collaborations in the world of fashion may seem like a no-brainer for the brands involved, and if all goes well (and with the right agreements in place) most collaborations should not end in litigation between the collaborators themselves. But collaborations may have more far-reaching implications for the brands’ positions in future trademark litigation and for how a court might assess their marks. Brands need to pay attention to these issues. 

While Part I of this article focuses on how collaborations could influence the likelihood of confusion factors in a trademark infringement analysis, collaborations also have the potential to impact a brand’s position in other areas of trademark law, including by weakening the position of a brand that seeks to bring a claim for trademark dilution and increasing the risk of naked licensing. These implications will be explored further in the upcoming Part II of our exploration into how brand collaborations are changing the trademark landscape. Part II will also include suggestions for fashion companies to protect and maintain their brand identities and trademark rights in the face of a trademark landscape made increasingly complicated by collaborations.

Megan K. Bannigan, Kate Saba, Grace McLaughlin, and Chris Zheng are lawyers at Debevoise & Plimpton LLP.