Image: Cult Gaia

Unpersuaded by Cult Gaia’s response to its latest pushback, the U.S. Patent and Trademark Office (“USPTO”) has again refused to register the brand’s popular Ark bag. On the heels of filing a 1,200-plus page response last month to the USPTO’s second preliminary Office Action, an examining attorney for the U.S. trademark body has shut down Cult Gaia’s trademark application for registration for the bamboo “it” bag for a third time, asserting that despite the brand’s arguments to the contrary, the appearance of the bag, itself, is functional in nature and fails to operate as a trademark.

In her third and final Office Action, the USPTO examiner Bernice Middleton stated on August 1 that Cult Gaia’s applied-for mark, “which consists of a three-dimensional configuration of [its crescent shaped Ark bag]” and makes use of “see-through construction using thin sturdy strips of material for securing items … appears to be a functional design.” In other words, the design is “essential to the use or purpose of the [product] or it affects the cost or quality of the [product],” and thus, is not registrable as a trademark. Middleton notes that this is because functionality is “an absolute bar” to registration, “regardless of any evidence of acquired distinctiveness.”

According to Middleton, as evidenced by media coverage of the Ark bag, including from Vogue and the Museum of Modern Art, “The public understands the bag [to be] another attempt at a commonplace style containing similar functional elements.” She notes that “consumers are aware of half-moon shaped carrying-bags, including those of bamboo construction, [and] Cult Gaia’s mark is merely an iteration or appropriation of a style of bag from the Japanese culture now present throughout the world and the United States for decades.”

In terms of functionality, the USPTO examiner points out that Cult Gaia’s counsel failed to “even attempt to parse out functional elements in the drawing [of the bag that was submitted to the USPTO], such as the cutaway top handles, securing thread binding, and half-moon shape,” which she claims are  “all commonplace in the marketplace for decades.”

Middleton goes on shoot down Cult Gaia’s argument that the Ark bag is not functional and has acquired distinctiveness, meaning that when consumers see the design, they link it to a single source … Cult Gaia. She states that “distinctiveness is not a proper argument for a functional configuration refusal,” as “distinctiveness and functionality are two separate issues in an application for a three-dimensional configuration mark consisting of a product design, product packaging or other types of trade dress.”

Still yet, the USPTO was unpersuaded by Cult Gaia’s argument that its bag is not functional because there are “limits to the usefulness of the design,” namely due to the “the impracticality of features of the bag.”

As such, Middleton asserts that Cult Gaia’s “see-through sunburst [bag] design … is a merely functional design.”

Next, Middleton turns her attention to her second point: that the appearance of Cult Gaia’s bag “does not indicate the source of applicant’s goods and to identify and distinguish them from others,” and thus, fails to function as a trademark, which is required for registration.

Distinguishing this matter from prior cases, Middleton notes that Cult Gaia “is inappropriately defending the right to a common shape and design and the right to call it its own as a trademark,” all while failing “to identify any features that … have acquired distinctiveness as a trademark.” The examining attorney also claims that Cult Gaia’s recently-submitted “response and evidence fail to highlight any acknowledgement of a ‘specific configuration adopted by [Cult Gaia] in its ‘application’ of the traditional style beyond mere refinement of a product design commonly used for the relevant goods.”

Cult Gaia, she argues, “does not refute that the bag, its shape, construction, or even typical bamboo materials are a part of a known vintage Japanese bag construction,” and claims that “social media and media coverage simply fall within entities aware of the history and appropriation of the bag in fashion and the novices or untraveled that are unaware.”

Significantly, “No mention is made of source indicating elements attributable to [Cult Gaia’s] specific reintroduction of the bag to young U.S. consumers,” and with that, Middleton again refuses to give Cult Gaia’s application the green light to move forward in the pre-registration process.

Cult Gaia’s counsel now has 6 months to respond to Middleton’s final refusal.