image: Coach

image: Coach

To coincide with its revamp under Stuart Vevers, following years of unimpressive growth, Coach has become vigilant in its efforts to reclaim some semblance of exclusivity in connection with its brand. This has taken the form of the New York-based brand filing a slew of trademark infringement lawsuits, including a recent one against an array of Los Angeles-based counterfeit sellers.

According to Coach’s complaint, which was filed last week in the Southern District of New York, a federal court in Manhattan, the defendants, which include La Vani Inc, Weihong Cui, and a bunch of unnamed “Does,” are liable for the “creation, importation, promotion, distribution, offer for sale and sale of merchandize which infringes upon Coach’s intellectual property.”

Such claims typically would make this an utterly straightforward – and otherwise unnecessarily reported counterfeit case (because it is an entirely common practice for fashion and/or luxury brands to routinely file trademark-centric cases against entities selling counterfeit goods and thus, these individual cases – in my opinion – rarely warrant articles of their own). However, Coach is interestingly taking this one a step further by not only claiming trademark rights in its name – both stylized and un-stylized – but it is claiming trade dress.

Coach’s Hangtag Trade Dress

For the uninitiated, trade dress is a type of trademark law that extends to the configuration (design and shape) of a product itself. For Coach, this takes the form of the design of the hangtag that comes on each of its bags. The brand – rather unsurprisingly – holds federal trade dress rights in a number of designs associated with its famed hangtag, most of which include “a rectangular tag with an attached chain … [with] the word “COACH” inside a lozenge design on [it].”

Additionally, as of September 2016, the brand also holds rights in the hangtag design without its name in class 18 (which covers a large array of handbag, wallet, luggage, and backpack designs). The description of that mark reads as follows: “A somewhat rectangular-shaped hang tag with rounded edges and a protrusion on one end that has a hole in it through which a chain can attach to the hang tag.” Given that the mark does not include the “Coach” name, this registration provides quite significant and expansive protection for the brand in its fight against fakes.

According to Coach’s complaint, “Coach has used the Hangtag Mark since 1973. Coach’s hangtag mark has acquired secondary meaning so that any product bearing such mark is immediately associated by consumers, the public and the trade as being a product of Coach.” The brand touches on the central theme of trade dress protection here, as in order to be registrable, the design must be “distinctive” (either inherently or because it has acquired “secondary meaning” amongst the consuming public).

As for how the seemingly commonplace hangtag become indicative of the Coach brand (or “gained secondary meaning”), the brand asserts: “Coach has invested considerable time, money and effort advertising and promoting merchandise bearing the Coach [hangtag trade dress] and enjoyed enormous success distributing such products in the U.S. and around the world. By virtue of this widespread advertising and distribution, the Coach [hangtag trade dress] has become instantly recognizable as exclusively denoting Coach and its high quality merchandise. As such the Coach trade dress has acquired secondary meaning.”

The Case at Hand

In the case at hand, Coach alleges that the defendants have created, imported, promoted and sold goods bearing its protected hangtag. In particular, Coach claims that La Vani Inc. has demonstrated a pattern of infringing its intellectual property even after Coach sued them and won in 2007 for manufacturing and selling counterfeit Coach goods, including bags that share similar designs with some of Coach’s most prominent and best-selling ones.

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Coach’s “Swagger” bag (left) & La Vani’s version (right)

As such, Coach has asked the court for temporary and permanent injunctive relief (which would bar the defendants from making use of Coach’s protected trade dress), as well as “damages, including actual damages suffered as a result of the defendants’ willful infringement of Coach’s trade dress obtained as a result of defendants’ trade dress infringement.”

* The is case is Coach, Inc. and Coach Services, Inc. v. La Vani, Inc., Weihong Cui, et al., 1:17-cv-01203 (SDNY).