Forever 21 is selling an interesting bag at the moment – one that arguably bears a little bit too much of a resemblance to Proenza Schouler’s PS1 mini messenger bag. The elements are very similar: the dimensions (Proenza Schouler’s bag is 8 1/2″H x 11″W x 4″D; Forever 21’s bag is 8″H x 11.5″W x 3.5″D); the hardware (both bear the classic Proenza Schouler metal tab and square closure, the latter of which is complete with a small rivet stud on each corner); and well, the overall look and feel (think: the dual pull-tab detail, the chain shoulder strap, and the side zipper detail). Keeping all of this in mind, I would argue that Forever 21’s version (see it after the break below) is one close copy. So, what can Proenza Schouler do?
Well, since the design duo, which consists of Parsons graduates Lazaro Hernandez and Jack McCollough, has not filed to federally register the trade dress of their PS1 mini messenger bag and also do not have design patent protection for the bag, they appear to be out of luck. That’s not necessarily the case, though, as they could always claim common law trade dress infringement. But what exactly is trade dress and thus, trade dress infringement?
Proenza Schouler PS1 minni messenger (left) & Forever 21’s version (right)
Trade dress is a type of trademark protection that extends to the configuration of a product itself – the design and shape of the product. In order to receive protection, both of the following must be true: the trade dress must be inherently distinctive – unless it has acquired secondary meaning – and the secondary use (Forever 21’s bag, in our case) must cause a likelihood of confusion amongst consumers. Case law has helped us to define this all a bit further. For trade dress to be considered “inherently distinctive,” it generally must be unusual and memorable, and it must be likely to serve primarily as a designator of origin of the product.
If a court deems that a design is not “inherently distinctive,” the brand is not necessarily out of luck, as secondary meaning will do. Another legal term of art. So, what is secondary meaning and how can a brand show that its design has achieved it? Well, according to Cartier, Inc. v. Sardell Jewelry, Inc., a case heard by the Second Circuit Court of Appeals in New York in 2008, secondary meaning may be established through a combination of the following six factors: (1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and (6) length and exclusivity of the mark’s use.
To put this simply, (1) Has the brand spent a significant amount of money to advertise the design at issue?, (2) Do consumers tend to link the design to the brand that designed it? (3) Are magazines, blogs, etc. featuring this design without the brand paying for the coverage? (4) Has the design sold well? (5) Are brands trying to copy the design? and (6) Has the brand been using the trade dress design for a long time exclusively?
Let’s look at an example before we try to determine if Proenza stands to take down Forever 21 here. The most famous example in fashion certainly has to be the design/appearance of the Hermès Birkin bag. As we have told you in the past, Hermès enjoys trade dress protection because the Birkin bag is so iconic that its appearance alone signifies the source of the product (Hermès) to consumers – much like the Hermès’ “H” logo or the Duc carriage with horse signifies the famous design house. As such, the following elements of the Birkin are protected: “a distinctive three lobed flap design with keyhole shaped notches to fit around the base of the handle; a dimpled triangular profile; a closure which consists of two thin, horizontal straps designed to fit over the flap, with metal plates at their end that fit over a circular turn lock; a padlock which fits through the center eye of the turn lock; and typically, a key fob affixed to a leather strap, one end of which is affixed to the bag by wrapping around the base of one end of the handle.”
But back to Proenza Schouler. A quick search of respected fashion sites (think: New York Times, Vogue, Style.com, etc.) results in an array of instances in which the Proenza Schouler PS1 bag is referred to as containing “distinctive” elements. This is helpful, as while the bag at issue for us is not exactly the PS1 style, it is a PS1 hybrid, and thus, it bears a large number of the core PS1 elements. Among the commonly cited “distinctive” elements are the fold-down closure, the V-shaped front flap, and the straps that run over the front of the PS1 which are tucked into small flat loops free of hardware – just to name a few.
Let’s assume, for argument’s sake, however, that the PS1 mini messenger bag is not necessarily distinctive. Can it meet the six factors the court set out in the Cartier case? It is difficult to tell with certainty, as we don’t know the brand’s advertising expenditures specific to the PS1 and/or the PS1 mini messenger bag. The same goes for the brand’s sales of these styles.
What we do know is this: 1) Blogs, magazines, newspapers, etc. love writing about the PS1. Purseblog, for instance, has many, many pages of unsolicited articles about the bag; it has graced the pages of Vogue, Elle, W, Glamour, InStyle, and many more publications; and continues to make waves on every major street style website; 2) Just about every young starlet in Hollywood and beyond (think: Mary-Kate and Ashley Olsen, Kate Bosworth, Kirsten Dunst, Olivia Wilde, Dakota Fanning, Jessica Alba, Reese Witherspoon, the Kardashians, etc. – hell, even Sally Field) has been pictured toting the PS1 or some variation thereof, which bodes well for establishing secondary meaning; 3) The Proenza Schouler boys exclusively havebeen utilizing the PS1 trade dress since 2008; 4) Since its debut, the bag has since listed over and over again by recognized industry publications as an “it” bag, among the likes of the Celine Luggage tote, the Balenciaga motorcycle bag, the Givenchy Antigona, and the YSL Muse bag – just to name a few; 5) It has been copied – a lot! Target copied the PS1. Nasty Gal has repeatedly copied the PS1. Zara copied the PS1. My Other Bag, which is known for its printing of iconic bags on canvas tote bags, copied the PS1. And as we know, Forever 21 has copied the PS1 multiple times; and 6) Gauging by Proenza Schouler CEO Shirley Cook’s comments on the PS1, namely, that is “has been a huge part of the growth of our business, as well a significant branding element,” sales for the bag are significant.
The only problem seems to be that Forever 21’s $33 dollar “Everyday Structured Satchel” is difficult to confuse for the original $1945 Proenza Schouler version while shopping on the F21 website. This, however, could be trumped by a post-sale confusion argument, which holds that whole the purchaser is likely to understand that they are not buying a specific brand’s product, others may be confused into thinking the product comes from a different source. Thoughts?