Thursday, October 17, 2013

TTAB Reverses Refusal to Register Leather Strip Pattern: Not Aesthetically Functional, Has Acquired Distinctiveness

The Board reversed a refusal to register the product design mark shown below, for leather goods and shoes, finding the design not to be aesthetically functional under Section 2(e)(5), and not to be mere ornamentation in view of its acquired distinctiveness. The Board emphasized that its ruling on non-functionality "is based on a very narrow reading of the proposed mark, and the scope of the protection to which it is entitled." In re Bottega Veneta International S.a.r.l., Serial No. 77219184 (September 30, 2013) [not precedential].

Aesthetic Functionality: Applicant Bottega Veneta described its mark as "a configuration of slim, uniformly-sized strips of leather, ranging from 8 to 12 millimeters in width, interlaced to form a repeating plain or basket-weave pattern placed at a 45-degree angle over all or substantially all of the goods." The Examining Attorney maintained that exclusive appropriation of this design would put competitors at a significant non-reputation related disadvantage, and therefore it is aesthetically functional and barred from registration pursuant to Section 2(e)(5).

The Examining Attorney submitted an "inordinate amount" of evidence, much of which was not persuasive because it showed various weave patterns, all different from the specific pattern of applicant's applied-for mark. The Board noted that applicant was not "seeking exclusive rights to all weave designs" for its goods. Although there may be a competitive need to use a weave design for leather, granting a registration to applicant would not deprive competitors from adopting a different design. Moreover, applicant's applied-for mark does not cover use of grasses, reeds, or wood strips, or other non-leather materials.

The Board noted that the Examining Attorney did an "extremely thorough job" in collecting evidence of third-party use of weave designs, some similar to that of applicant. However, "the very limited number of weave designs that approximate applicant's weave design, at the very least, raises a question as to whether there is a competitive need for the design that applicant seeks to register." Moreover some of the third-party products may be intended to copy or mimic applicant's design in order to profit from the popularity or cachet of applicant's design. At a minimum, there is some doubt as to whether there exists a competitive need to use applicant's particular weave design.

In cases involving other refusals to register (e.g., surnames, mere descriptiveness), there is a policy that any doubt regarding a refusal should be resolved in favor of publication of the mark. The Board concluded that the same policy applies particularly well here, since publication of the mark will allow competitors to assert and prove that they indeed do have a competitive need to use the design at issue.

Therefore the Board reversed the Section 2(e)(5) refusal, noting again the narrowness in scope of the applied-for mark.

Ornamentation and Acquired Distinctiveness: The PTO's evidence demonstrated that woven leather designs are often used for handbags and shoes. Consequently, consumers are not likely to view such designs as source identifiers unless there has been significant promotion of the design as a trademark. In short, applicant had a "heavy burden" to prove acquired distinctiveness. However, applicant's evidence was "significant" in amount.

Applicant first used its weave design on handbags in 1975. Its sales during the period 2001-2007 were $275 million, and the weave design appeared on more than 80% of its goods. Advertising expenditures during this period totaled $18 million. Its catalogs and advertisements have featured products having the weave design, and many of the advertisements, as well as media editorials, refer to the "intrecciato wave design." Numerous newspaper and magazine articles refer to applicant's "signature" weave design. Numerous declarations from people in the fashion industry testified to the recognition of the weave design as a source indicator. And perhaps most persuasive were customer comments referring to or describing third-party products as looking like applicant's weave.

The Board concluded that the evidence amply demonstrated that the applied-for design had acquired distinctiveness and was not merely ornamental.

Read comments and post your comment here.

TTABlog note: Applicant sought registration under Section 2(f), thereby, according to the Board, admitting that its design was not inherently distinctive. But a product configuration can never be inherently distinctive (Wal-Mart), so did applicant "admit" anything by relying on Section 2(f)?

Text Copyright John L. Welch 2013.


At 10:42 AM, Anonymous Anonymous said...

The Wal-Mart rule never made any sense to me. I can't see any reason why product packaging should be treated difference than products themselves when it comes to distinctiveness.

At 1:58 PM, Anonymous David Perlsack said...

Wal-Mart? You won't find these fancy-schmantzy shoes at Wal-Mart!

At 3:07 PM, Anonymous Orrin A, Falby said...

Take a guess where this explanation why product configuration is not inherently distnctive is taken from:

"In the case of product design, as in the case of color, we think consumer predisposition to equate the feature with the source does not exist. Consumers are aware of the reality that, almost invariably, even the most unusual of product designs–such as a cocktail shaker shaped like a penguin–is intended not to identify the source, but to render the product itself more useful or more appealing.

The fact that product design almost invariably serves purposes other than source identification not only renders inherent distinctiveness problematic; it also renders application of an inherent-distinctiveness principle more harmful to other consumer interests. Consumers should not be deprived of the benefits of competition with regard to the utilitarian and esthetic purposes that product design ordinarily serves by a rule of law that facilitates plausible threats of suit against new entrants based upon alleged inherent distinctiveness.
. . . The availability of these other protections [copyright, design and patents] greatly reduces any harm to the producer that might ensue from our conclusion that a product design cannot be protected under §43(a) without a showing of secondary meaning."


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