It has been an eventful few weeks for Kering-owned Bottega Veneta. The Italian luxury brand's creative director Tomas Maier showed his Spring 2014 womenswear collection late last month and the brand opened its largest flagship store to date, located on the Via Sant’Andrea in Milan. Depending on who you talk to, the biggest news yet, however, is the recent ruling regarding the brand's weaved leather pattern trademark. Last Monday, the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board (TTAB or the Board) ruled in Bottega Veneta's favor regarding the brand's signature weave pattern (“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.”), thereby, reversing a previous denial, which dates back to December 2009. At issue for the TTAB was twofold: 1) whether Bottega Veneta's proposed mark is functional; and 2) whether it is merely ornamental. Read on ...
FUNCTIONALITY - According to the TTAB's decision, a trademark will be deemed aesthetically functional, and therefore, prohibited from registration in that class of goods (Class 18 and Class 25 (for shoes only), in this instance) "if the exclusive appropriation of that feature would put competitors at a significant non-reputation related disadvantage ... i.e., whether there is a competitive need for others to use the particular weave design." In order to make this determination, the TTAB considered "1500 pages of evidence, consisting primarily of advertisements from third-party websites depicting items having weave designs." The TTAB found much of this evidence to "not [be] persuasive because the pictured handbags and shoes display weave patterns in general, rather than the weave design described in the application." The Board also held the examining attorney's arguments that "third parties would be deterred from using any plain weave design given the possibility of inadvertent infringement" and thus, would result in anti-competitiveness, were unpersuasive due to the limited scope of the proposed trademark.
One more argument that the examining attorney made that is worth mentioning, if for no other reason than its amusing, is that Bottega Veneta's proposed trademark would limit "third parties that use a woven leather design for other fashion accessories, such as belts would be hindered in expanding their product lines to shoes and handbags," especially because people like to match their accessories and their shoes. The examining attorney cited John Deere & Co. v. Farmhand Inc., in which the court held that “farmers prefer to match their loaders to their tractor.” The TTAB did not seem to find the tractor/loader example to be convincing.
ORNAMENTATION AND ACQUIRED DISTINCTIVENESS - Bottega Veneta admits that its weave design is not inherently distinctive, but that it has come to be recognized by the consuming public as a source indicator for its goods. In order to prove this assertion, Bottega Veneta submitted: media coverage in The New York Times, Vanity Fair, and Vogue, among other publications; declarations from executives at Bergdorf Goodman and Neiman Marcus, etc. that claim consumers immediately recognize that the weave design handbags come from Bottega Veneta; comments from consumers as evidence that shoppers understand the woven pattern as a signature of Bottega Veneta; and various other forms of evidence, such as the company's $22.9 million advertising budget for 2005-2009 and the fact that 80% of its goods consist of the weave design. For these reasons, the TTAB held that Bottega "met its burden of proving that the applied-for design has acquired distinctiveness as a trademark for the identified goods."
Having said all of this, it is important to note the limited scope of this protection. Bottega Veneta's weave design trademark (obviously) only extends to "identical or nearly identical" designs comprising the elements listed in the description of applicant’s mark. Thus, bags and/or shoes that have a “horizontal” weave, or are not made of leather or materials that simulate leather, or have strips that are much wider than 8 to 12 millimeters, or have a weave pattern on only a portion of the product, or have a weave that is not a plain weave, are not affected by Bottega Veneta's trademark.