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Weaving a Trademark

Posted in Copyright Law, Patent Law, Trademark Law

 By: Lisa Y. Wang

This month, the Trademark Trial and Appeals Board ruled that Bottega Veneta, a luxury Italian fashion brand, well known for its "weave design" handbags and accessories, could register a trademark for that specific design. Bottega Veneta handbags and accessories do not have obvious logos on the outside, signifying its origin. Instead, the weave patterns, multiple thin strips of leather forming a weave pattern (much like a basket weave) at a 45 degree angle, serves as its "trademark" and source of origin. Bottega Veneta claims that it created this very specific leather weaving technique and pattern, known as intrecciato, in the 1960’s.   Since there is no logo, this easily made weave pattern is constantly copied by fast fashion retailers and other brands, hence Bottega Veneta’s attempt to register a trademark for that specific pattern.

 

Not surprisingly, Bottega Veneta’s trademark application was initially rejected because the Examining Attorney found that the pattern was merely functional and ornamental. The United States Patent and Trademark Office does not register trademarks it considers aesthetically functional. A trademark is aesthetically functional if its design features are included only to make the product more aesthetically appealing and commercially desirable. In other words, the feature is used because it looks good, and that is the main reason for its use.  An aesthetically functional feature can only be protected as a trademark if it is source identifying and non-functional. If the feature serves a significant non-trademark/source identifying function, then it may not be protected as a trademark. Allowing this feature to be registered as a trademark would grant the owner a competitive advantage that is not related to its function as a brand identifier. Often times, the aesthetically functional aspect of the product is the primary reason for its commercial success and it would not be fair to allow a company or person a monopoly over that feature. This was one of the most fought over issues in the Louboutin v. Yves Saint Laurent case, with Yves Saint Laurent arguing that the Louboutin’s red sole trademark was just a useful aesthetic feature of the design and therefore, could not be trademarked. While the district court agreed with Yves Saint Laurent, the Second Circuit overturned it on appeal, which may have left the door open for this decision in favor of Bottega Veneta.

Bottega Veneta argued that even if their weave design was merely ornamental, it had acquired distinctiveness as a mark which would overturn a finding of ornamentation. A mark acquires distinctiveness if it is used and promoted extensively, to the point where consumers now directly associate the mark with the applicant as the source of those goods. Acceptable evidence of distinctiveness can include (a) advertising and promotional materials that specifically show or promote the applied-for mark in use as a trademark and source-identifier; (b) dollar figures for advertising devoted to such promotion; (c) dealer and consumer statements indicating recognition of the applied-for mark as a trademark; or (d) other evidence that shows consumer recognition of the applied-for mark as a trademark for applicant’s goods. Bottega Veneta submitted all of those types of evidence, including the company’s $22.9 million advertising budget for 2005-2009 and the fact that the majority of its goods (80%) consist of the weave design. Accordingly, the Board held that Bottega had met its burden of proving that the design had acquired distinctiveness as a trademark for the applied-for goods. 

The TTAB also considered thousands of pages of evidence, the majority of which were advertisements from third party websites showing items with weave designs. However, the TTAB did not find this evidence persuasive because those weaves designs were different than the apparently very specific and limited weave design in the application.   The Board made a point to note that Bottega Veneta could only register the exact pattern at issue, and the mark would not cover anything else.  As such, Bottega Veneta’s trademark only applies to identical or nearly identical designs that fit the very specific description of the mark as written in the trademark applications 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."

Fashion companies tired of fast fashion copying were likely thrilled with the outcome of this case. It opens the door to numerous other companies acquiring trademark protection of their signature design elements, something that is more difficult to obtain using copyright law.