For 2 years, Stella McCartney has been fighting for “Fur Free Fur,” not the textile, itself, but the terminology, which appears on square patches adorning the designer’s products. After carefully developing materials that “incorporate the look and feel of fur but without any animal cruelty,” and slapping visible “Fur Free Fur” tags on them, complete with the same font at Stella McCartney’s main logo, the brand’s legal team sought to register the term as a trademark with the U.S. Patent and Trademark Office (“USPTO”) for use in connection with various types of garments and accessories. The problem? The USPTO said no.
Following a string of back-and-forth communications beginning shortly after McCartney filed a trademark application, the USPTO’s examining attorney made it clear that in his view, “Fur Free Fur” is not serving as a trademark (i.e., does not identify the source of McCartney’s products in the same way as say, an “LV” logo on a bag identifies the Louis Vuitton brand, for instance). Instead, he determined that it was “merely describing features of [McCartney’s] goods,” and thus, ineligible for registration, as trademark law does not protect purely descriptive marks.
According to the examining attorney, “Evidence of record indicates that [Stella McCartney] intended the connotation of the mark to be easily understood and obvious to the general public so that it would clearly convey the fact that its goods are made of material that resemble the pelt of a mammal but are not in fact made from materials from the skin of a mammal.”
Unhappy with the outcome before the USPTO, Stella McCartney’s counsel appealed the matter to the USPTO’s Trademark Trial and Appeal Board (“TTAB”) in June 2018, arguing that “Fur Free Fur” does not describe the brand’s products – but is actually a whole lot more complicated than that.
McCartney’s counsel asserted that the “Fur Free Fur” mark “obliquely suggests information about the goods.” To be exact, the mark, itself, is more than the sum of its parts because it “is comprised of terms that, when taken together, present an incongruous and circular meaning … that requires additional thought” on the part of the consumer, McCartney’s counsel argued.
And as of late last week, the TTAB’s panel of judges agreed – for the most part. According to the majority decision, “Fur Free Fur” is not a mere description of McCartney’s products because … “in [McCartney’s] mark, the two instances of the term ‘FUR’ have different meanings, which is likely to give consumers pause.” The first use of the word FUR “refers exclusively to animal fur,” stating that the goods are “animal fur free.” In the second instance, “FUR refers to imitation fur.”
Thus, “the two different meanings of the term ‘fur’ within [McCartney’s] single mark creates a logical paradox … suggesting that the goods are both fur-free and made of fur at the same time,” and thereby, not descriptive.
Before sending the matter back down to the USPTO in order to move towards registration (given the majority decision in McCartney’s favor), Administrative Trademark Judge Kuczma added his own opinion, disagreeing with the other two and asserting that the mark is, in his view, merely descriptive.
Aren’t trademarks fun?