Case(s): United States Patent and Trademark Office, Trademark Trial and Appeal Board - Serial No. 77219184
Facts: In 1975, Bottega Veneta presented its first collection of handbags featuring what’s known as the “Bottega Weave Design,” a design appearing on the outside of the bags consisting of slim leather strips threaded together and placed at an angle to the surface of the product. Over the years, the Bottega Weave Design became an identifying element of the brand’s designs.
In February 2001, because of the recognition that the Bottega Weave Design had achieved, Bottega Veneta began to incorporate the mark into a broader line of products, including jewelry, home furniture and decorative accessories.
On June 27, 2007, Bottega Veneta first applied to register the Bottega Weave Design. On September 3, 2007, the Examiner refused to register the Bottega Weave Design on the grounds that: “(i) the mark is functional, in that the Bottega Weave Design provides the utilitarian advantage of strength, stating that ‘the process of weaving leather strips together results in a fabric greater than the sum of its parts in terms of strength and durability’; (ii) the mark consists of a non-distinctive product configuration requiring a showing of secondary meaning; and (iii) the mark is merely ornamental because ‘it merely comprises the pattern of the material from which applicant’s goods are made in whole or part.’”
On March 3, 2008, Bottega Veneta filed a response, arguing that the Bottega Weave Design was not dictated by utilitarian purposes but rather “has intentionally and consistently been used by Bottega Veneta to provide consumers with a visual indicator that the products originate from Bottega Veneta.”
On July 11, 2008, the Examiner responded, and continued the refusal to register. First, the Examiner found that Bottega Veneta had failed to overcome the determination of utilitarian functionality, as Bottega Veneta “did not address the possibility that the proposed mark nonetheless enhances the strength, durability, suppleness or other quality of the goods.” Second, the Examiner determined, even without utilitarian functionality, the Bottega Weave Design was not registrable under the theory of aesthetic functionality “because it provides other real and significant competitive advantages and thus should remain in the public domain.”
There were a total of four responses from the Examiner, with the final coming on December 14, 2009, when the Examiner made his refusal final.
On June 10, 2010, Bottega Veneta filed its Notice of Appeal to the Trademark Trial and Appeal Board (TTAB).
Trademark Trial and Appeal Board
On September 30, 2013, the TTAB ruled for Bottega Veneta and overturned the Examiner’s rulings. "The evidence we have detailed herein, as well as the other evidence of record, amply demonstrates that applicant's weave design is recognized by consumers as a trademark for applicant's goods," the board wrote. The board also disagreed with the Examiner’s decision that the design was aesthetically functional, finding that there was no competitive need to use Bottega Veneta’s exact pattern.
The United States Patent and Trademark Office does not register trademarks it considers aesthetically functional. A trademark is aesthetically functional if its design features are intended to enhance a design and make a product more commercially desirable. An aesthetically functional feature can be protected, but only if it is source identifying and non-functional. (IP Law Blog)
The ultimate goal is to prevent a company or person from having a monopoly over an aesthetically functional design aspect. The reason is because a trademark is meant to be a source identifier. To allow a designer or brand to trademark an aesthetically functional design element would give that designer or brand a competitive advantage related to a design aspect that is not related to brand identification.
On aesthetic functionality, the board found that competing products “do not show that the particular weave design applicant seeks to register is such a generally accepted decorative feature that we can conclude that there is a legitimate competitive need for others to use it.” In other words, Bottega Veneta’s exact pattern is not something competitors need to use in order to remain competitive.
This case opens the door for other designers to seek trademark protection for design elements that also serve as source identifiers. It’s important to note, though, that the trademark protection granted to Bottega Veneta is very narrow. The board made sure to note that the trademark only applied to a weave design that is identical to the mark described in the application (“a configuration of 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”). This means that competitors are free to use other weave designs, so long as they are not exact copies of the Bottega Weave Design.