Tuesday, April 25, 2023

TTAB Finds "VETEMENTS" Generic for .... Guess What?

The Board affirmed the USPTO's refusals to register VETEMENTS, in standard character and slightly stylized form, for various clothing items, including shirts, skirts, and sweaters, and for related retail store services, finding the proposed marks to be generic and, in the alternative, merely descriptive of the goods and services and lacking in acquired distinctiveness. In re Vetements Group AG, Serial Nos. 88944198 and 88946135 (April 21, 2023) [not precedential] (Opinion by Judge Peter W. Cataldo).

Genericness: There was no dispute that that the identifications in the applications defined the genus of goods and services at issue. The relevant consumers are the general public. In cases involving a foreign language mark, the "ordinary American purchaser includes purchasers knowledgeable in English as well as the pertinent foreign languages." The question, then, was whether VETEMENTS "is understood by the relevant public primarily to refer to" the identified goods and services.

There was no question that VETEMENTS is a French language term that literally and directly translates into English as "clothing." Applicant provided that translation in its applications and did not dispute the meaning. It was also undisputed that consumers, as well as media outlets and commentators in the clothing and fashion industries, recognize that meaning.

Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine, inter alia, genericness. As a general principle, the doctrine is applied in situations in which an American consumer is likely to “stop and translate” foreign words into their English equivalent.

Applicant argued that its proposed marks are not likely to be translated into English but would be would be perceived as trademarks, since the marks are displayed as such on labels and in advertising. However, these "rather speculative assertions" were not persuasive and were "largely" unsupported by evidence. "Nor does Applicant cite to any authority for its position that based on its manner of use and also its trade name use, consumers are more likely to perceive them as trademarks and not a generic term."

Applicant argued that the French language is neither commonly nor widely spoken in the United States, since significantly less that one percent of the population speak French. The Board was unmoved.

[T]he evidence of record indicates approximately 1.3 million such speakers live in the United States. While that may represent a small percentage of US citizens and residents, it nonetheless is a large number of speakers of a modern, living language that is the fifth most commonly spoken non-English language in this country.

The Board found it appropriate to apply the doctrine of foreign equivalents. 

There is no evidence of record suggesting that that the translation in the involved applications is inaccurate, that “vetements” is so obscure that it would not be easily recognized and translated by French speakers in the U.S. marketplace, or that it is an idiom which is not equivalent to its direct English translation. As noted, Applicant is a Paris-based fashion house using the French term for “clothing” to identify itself. And there can be no doubt that French is a common, modern language. Consumers familiar with French are thus likely to “stop and translate” VETEMENTS or when encountering it used in connection with Applicant’s identified clothing and clothing-related retail services.

Concluding that the proposed marks "primarily refer[] to a genus of clothing items and online retail store services featuring clothing items," the Board affirmed the genericness refusal.

Acquired Distinctiveness:Alternatively, the Board found VETEMENTS to be highly descriptive of applicant's goods and services. In determining the merits of applicant's Section 2(f) claim, the Board applied the factors set forth in the CAFC's Converse decision.

There was no direct evidence, such as survey results, that would allow the Board to assess the association of the proposed marks with a particular source by actual purchasers. Applicant's evidence of recognition from fashion magazines was not such direct evidence. Evidence regarding substantially exclusive use since 2014 was not particularly persuasive in view of the high degree of descriptiveness of the proposed marks.

There was no evidence regarding applicant's advertising expenditures or the scope of its promotional efforts. Its sales figures were impressive, but were not placed in marketplace context. There was no evidence of copying, and unsolicited media coverage was not significant.

Consequently, the Board concluded that applicant had failed to carry its heavy burden of proving acquired distinctiveness.

Read comments and post your comment here.

TTABlogger comment: Seems like survey evidence might have turned the tide here. Maybe we'll see an appeal by way of civil action, where additional evidence can be submitted.

Text Copyright John L. Welch 2023.


At 5:07 PM, Anonymous Anonymous said...

Interesting brand.


Post a Comment

<< Home