Tis the season to register your jacket as a trademark? That is what Barbour is looking to do with a newly-filed application with the U.S. Patent and Trademark Office (“USPTO”). The nearly 125 year old English outerwear brand wants to federally register design elements of its $400 Bristol Wax Jacket, which it says it has been selling since as early as 1980, and thereby, prevent others from making and selling the same – or confusingly similar – versions.
According to the trademark application that Barbour filed on December 13, the trademark – or better yet, trade dress – consists of “a three-dimensional configuration of an outerwear design featuring a combination of the following elements: 4 pockets placed and oriented as follows: 2 on each of the front left and right side beginning at the mid-breast of the jacket and extending to the waist of the jacket; [and] 2 large pockets on each of the left and ride side of the jacket beginning at the [waist] and extending to just above the bottom of the jacket both with exterior flap closures and two eyelets on the underside of the front pockets.”
Still yet, Barbour is claiming rights in “a metal zipper pull configured in a ring shape with the top quarter of the ring being solid on a 2-way opening zip; a collar made of corduroy with detachable throat cover; and a studded flap that closes over the entirety of the front zipper on the middle of the jacket.”
In order for Barbour to claim protection in the jacket design, it will have to show that the elements at issue – i.e., the pocket placement, the zipper, collar, and studded flap – are both non-functional and have acquired distinctiveness (since product design elements can never been inherently distinctive, as we learned in Wal-Mart Stores, Inc. v. Samara Bros). In terms of the latter, Barbour will have to show that consumers see the design elements and associate them with a single source.
As Alex Montgomery of the Tantalizing Trademarks blog noted, Barbour might be in for an uphill battle in showing that the elements at issue are not functional. Montgomery references Alexander Wang’s recent “difficulty showing that its configuration for several zippers on a [fanny pack] isn't functional.”
According to Montgomery, “Alexander Wang's advertising [for its Attica fanny pack] stated that the separate zipper compartments are for ‘multi functionality’ and several other designs from third parties incorporated zippers in the same areas, indicating there is not a wide variety of alternative designs available to competitors).” With that in mind, Barbour might have a tough time showing that its pocket placement, etc. is not essential to the use or purpose of the jacket.
And even if Barbour can convince the USPTO that its design elements are not “essential to the use or purpose of the [jacket]” and that the elements do not “affect the cost or quality of [it],” the brand will still have to show that consumers associate the pocket placements, zipper design, and collar with one brand, preferably Barbour.