Bottega Veneta fails to weave a successful defence
Catherine White
Italian luxury goods and high fashion brand BottegaVeneta has lost an opposition battle at the US Trademark Trial and Appeal
Board
(TTAB).In a decision last week, the board held that the luxury goods
manufacturer’s proposed weave mark for handbags and shoes “has failed to
establish in this proceeding that the applied-for mark has acquired
distinctiveness”.Specifically, the application consists of a
“configuration of slim, uniformly sized strips of leather, ranging from 8 to 12mmin
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”.Upholding an opposition proceeding filed by shoe seller
Marc Fisher, Administrative Trademark Judge (ATJ) Greenbaum ruled that “the
opposition is sustained on the ground that the applied-for mark is a merely
ornamental product design that has not acquired distinctiveness.”The ATJ added that, “It does not support a finding that
the applied-for mark has acquired distinctiveness as a source identifier even
among Bottega Veneta’s customers, let alone general consumers.”Greenbaum explained that to determine whether a
configuration has acquired distinctiveness, advertisements must show promotion
of the configuration as a trademark.However, he noted that Bottega Veneta submitted “no
testimony or evidence to support a finding that such is the practice in the
footwear industry. On this record, the lack of ‘look for’ advertising
undermines the applicant’s claim of acquired distinctiveness based upon its
advertising.”The ATJ held that although the Italian brand pointed to
its use of the design since 1975, claiming it to be its ‘signature’ design, he
said that “long and continuous use alone is insufficient to show secondary meaning
where the use is not substantially exclusive”.BackgroundBottega Veneta filed an application under Class 18 for ‘handbags
and other bags, cases, wallets and purses made all or substantially all of leather’ Class 25
for ‘footwear’.The US Patent and Trademark Office’s examining attorney
refused to register the proposed marks in both classes, holding them to be
“merely ornamental, or alternatively, a non-distinctive product design that is
not registrable absent sufficient proof of acquired distinctiveness”.The luxury brand appealed the decision and in September
2013, the USPTO’s TTAB reversed the refusal to register the applied-for mark, holding
the design not to be aesthetically functional and not to be mere ornamentation
in view of its acquired distinctiveness.The mark was then published, after which Fisher lodged an
opposition proceeding, claiming that the applied-for design “does not function
as a trademark because it is merely ornamental”.
Italian luxury goods and high fashion brand BottegaVeneta has lost an opposition battle at the US Trademark Trial and Appeal
Board
(TTAB).In a decision last week, the board held that the luxury goods
manufacturer’s proposed weave mark for handbags and shoes “has failed to
establish in this proceeding that the applied-for mark has acquired
distinctiveness”.Specifically, the application consists of a
“configuration of slim, uniformly sized strips of leather, ranging from 8 to 12mmin
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”.Upholding an opposition proceeding filed by shoe seller
Marc Fisher, Administrative Trademark Judge (ATJ) Greenbaum ruled that “the
opposition is sustained on the ground that the applied-for mark is a merely
ornamental product design that has not acquired distinctiveness.”The ATJ added that, “It does not support a finding that
the applied-for mark has acquired distinctiveness as a source identifier even
among Bottega Veneta’s customers, let alone general consumers.”Greenbaum explained that to determine whether a
configuration has acquired distinctiveness, advertisements must show promotion
of the configuration as a trademark.However, he noted that Bottega Veneta submitted “no
testimony or evidence to support a finding that such is the practice in the
footwear industry. On this record, the lack of ‘look for’ advertising
undermines the applicant’s claim of acquired distinctiveness based upon its
advertising.”The ATJ held that although the Italian brand pointed to
its use of the design since 1975, claiming it to be its ‘signature’ design, he
said that “long and continuous use alone is insufficient to show secondary meaning
where the use is not substantially exclusive”.BackgroundBottega Veneta filed an application under Class 18 for ‘handbags
and other bags, cases, wallets and purses made all or substantially all of leather’ Class 25
for ‘footwear’.The US Patent and Trademark Office’s examining attorney
refused to register the proposed marks in both classes, holding them to be
“merely ornamental, or alternatively, a non-distinctive product design that is
not registrable absent sufficient proof of acquired distinctiveness”.The luxury brand appealed the decision and in September
2013, the USPTO’s TTAB reversed the refusal to register the applied-for mark, holding
the design not to be aesthetically functional and not to be mere ornamentation
in view of its acquired distinctiveness.The mark was then published, after which Fisher lodged an
opposition proceeding, claiming that the applied-for design “does not function
as a trademark because it is merely ornamental”.