Maison Margiela is looking to enforce its trademarks in the numbers-centric branding that adorns its wares, arguing in an opposition proceeding that it will be damaged if an unaffiliated third party is able to secure a registration for a “confusingly similar” mark of its own. In the notice of opposition that it lodged with the U.S. Trademark Trial and Appeal Board (“TTAB”) in April, as first reported by TFL, the French fashion brand asserts that it maintains rights in a handful of trademarks that consist of the stylized placement of numbers 0-23 for use across goods/services ranging from apparel to homewares.
In light of the “vast amounts of time, effort, and money” that it has spent in developing, advertising, and publicizing the sale of its goods/services and its various trademarks in the U.S., OTB Group-owned Margiela contends that its marks, including the 0-23 number marks, “are widely recognized by the general consuming public in the United States as an exclusive designation of source of [its] goods/services, are distinctive indicators of the origin of [its] goods/services and are extremely valuable symbols of [its] goodwill.”
Against that background, Margiela claims that Hyung Ki Lee filed an application for registration with the U.S. Patent and Trademark Office in February 2023 (on a 66(a) basis), looking to extend his rights in the trademark in Korea into the United States. The problem, according to Margiela, is that Lee’s mark – which consists of a yellow-green four-leaf clover with white diagonal lines with the term “WAY77” above in yellow-green and the numbers 5, 30, 31, 11, 25, 17, 14, 21, 19, 24, 22, 12, 28, 6, 10, and 33 in white on the clover – is confusingly similar to its own numbers-centric marks. Moreover, Lee is looking to register his “lookalike” mark for use on similar goods/services as Margiela, including handbags (Class 18) and clothing (Class 25).
Margiela alleges that it “has been harmed, and continues to be harmed” by Lee’s application, as its “consumers and potential consumers are likely to mistakenly believe” that goods bearing the clover mark are “authorized, licensed, or controlled” Margiela “or that they are affiliated with or in some way related to [Margiela]” when they are not. Margiela further argues that Lee’s mark is “a colorable imitation or misappropriation of [its] marks and will enable [Lee] to reap where it has not sown by trading on the goodwill of [Margiela’s] business as symbolized by [its] marks.”
Given that Lee’s clover mark is “so similar to [its own] trademarks in sound, appearance, meaning, and/or commercial impression,” and thus, is “likely to cause confusion, mistake, or deception as to the source of origin or sponsorship of the goods and services,” Margiela calls on the TTAB to block the application for registration.
At the same time, Margiela contends that its marks (some of which are pictured above) have “acquired distinctiveness and a high degree of consumer recognition and, as a result of [its] long and continuous use of the same, [were] famous in the United States” as of the time that Lee filed his application for registration for the clover mark. With such alleged “fame” in mind, counsel for Margiela argues that “the registration or commercial use of [Lee’s] mark will cause, or is likely to cause, dilution of the distinctive quality of” the Margiela marks and would “diminish the capacity of [Margiela’s] marks to identify and distinguish” Margiela’s goods/services from those of others.
> The Margiela brand is, in fact, well known within the fashion industry and beyond. This is due, in part, to the fact that “goods/services bearing [Margiela’s] marks have been worn on U.S. and international red carpets by A-list celebrities,” its counsel argues. Moreover, the company claims that “the Margiela brand” – as distinct from its number marks – “is believed to have been mentioned in more than 100 songs by mainstream artists” and featured in “prominent publications.” Even with such media/consumer attention in mind (and yes, while acknowledging that it is common practice to throw a dilution claim in here), it seems like it could be a stretch for the TTAB to find that the company’s number marks have reached the level of fame necessary for a successful dilution claim.
THE BIGGER PICTURE (for Margiela’s marks): While Margiela has secured registrations for its various 0-23 marks in the U.S., the United Kingdom, and the European Union, among other nations, for use on cosmetics/fragrances, eyewear, clothing, jewelry, etc., it struggled relatively recently in the EU when it sought to register a numbers-centric mark sans any significant stylization. In a decision last year, an appeal board for the European Union Intellectual Property Office rejected Margiela’s bid to beat an earlier registration refusal for a trademark consisting of three lines of the numbers 0-23.
The Board rejected the application for the trademark for all of the goods and services claimed, driving home the point that a mark that the public is likely to perceive purely as a sequence(s) of numbers (as opposed to as a particular indication of origin) does not reach the level of distinctiveness required for registration.
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