US Patent Office TTAB Denies Registration of Generic Handbag
Ending a hard-fought three-year campaign to register a popular handbag, the U.S. Patent & Trademark Office (PTO) Trademark Trial & Appeal Board has set a precedent for its decision denying registration of the trademark configuration of the product, considering it a generic configuration not eligible for trademark registration. The board also concluded that even if the design of the bag had not been generic, the applicant had not provided the necessary proof that the design of the bag had acquired distinctiveness. In re Jasmine Larian, LLCserial number 87522459 (TTAB, January 19, 2022; redesignated March 29, 2022) (Cataldo, Lynch, AllardATJ).
Fashion label CULT GAIA’s ‘ARK’ handbag is made of strips of bamboo creating a transparent ‘sunburst design’ and has been worn by celebrities such as Beyoncé and Jessica Alba. The brand’s founder and CEO, Jasmin Larian, has applied for the following brand’s Main Register listing for a three-dimensional handbag:
After several years of examination, the examining lawyer finally issued a final refusal on the grounds that the proposed configuration was a generic configuration or, failing that, a non-distinctive product design that had not acquired any distinctive character. Larian appealed to the Commission.
Recognizing the commercial success of the CULT GAIA ARK bag, the Commission explained that the question before it was whether the proposed mark was generic (that is to say, a common model of handbag), or, in the alternative, whether the bag constituted a non-distinctive product model which had acquired distinctive character. The Board considered both issues, as similar evidence was relevant to both investigations.
A mark must be distinctive in order to be registered. This distinctiveness is measured on a spectrum, where one side of the spectrum consists of generic terms or generic designs (that is to say, non-distinctive and non-protectable as trademarks) and the other side consists of arbitrary or fanciful registrable marks. The suggestive marks are somewhere in the middle. In the context of product designs, genericity can be found when the design is so common in the industry that the design cannot be said to identify a particular source of the product. Generic product designs don’t work like a brand. Genericity is assessed by determining the kind of goods or services in question, then determining whether the consuming public primarily considers the design for which registration is sought as a category or type of trade dress for the kind of goods or Services. For the ARK bag, the plaintiff and examining counsel agreed that “handbags” were the type of goods in issue. The relevant consumer audience was found to consist of ordinary consumers who purchase handbags.
The Board reviewed the evidence on the record to assess the importance of the bag’s design to ordinary consumers, that is to say, whether they considered the configuration of the bag as an identifying mark of the source or simply as a common handbag pattern. The Commission detailed eight different categories of evidence, which the Commission said showed that “in the decades preceding and the years immediately preceding the date of the applicant’s first use – and even concurrently with the applicant’s use – consumers in the United States were exposed to handbags embodying the proposed brand and from several third parties. The Board found that one of the most problematic pieces of evidence for the plaintiff was an information card included with the product that stated “[t]its CULT GAIA bamboo handbag is a reproduction of a classic Japanese picnic bag,” along with similar published statements made by the Claimant’s founder. Similar evidence included identical (or nearly identical) bags sold by other third parties prior to Plaintiff’s launch date, as well as articles about the historical nature of the bag’s design (possibly dating to the 1940s, with debates as to its origin in Japan or Italy). This evidence led the Board to conclude that the model applied for was a handbag model “so common in the industry” that it could not be used as an indicator of provenance.
Against the possibility of a challenge to its decision on genericness, the Board also considered whether the evidence on the record supported a conclusion that the bag design had acquired distinctiveness to make it eligible for registration. To succeed on acquired distinctiveness, a claimant must demonstrate that the primary importance of the configuration of the product is the source of the product, not the product itself, through a combination of six interdependent acquired distinctiveness:
Association with a particular source by actual buyers
Duration, degree and exclusivity of use of the mark/design or model
Quantity and method of advertising
Amount of sales and number of customers
Unsolicited media coverage of the product including the mark.
In its assessment of these factors, what stands out the most from the Commission is the absence of exclusivity of use based on other sales to third parties and the absence of advertising directing consumers to the identifiable characteristics of the bag ( often referred to as “looking for” advertising). of customers.
The Board therefore refused to register the design or model of the product on the grounds of both its generic character and the absence of demonstration of the acquisition of a distinctive character by the mark.