A Chinese company that is looking to secure a trademark registration for the configuration of a tote bag that mimics a hot-selling Marc Jacobs bag is unsurprisingly facing pushback. In a newly-filed Office action, an examining attorney for the U.S. Patent and Trademark Office (“USPTO”) preliminary refused to greenlight the application that Guangzhou Xiaolingwan Trading Co., Ltd. lodged last fall for the appearance of a tote bag imprinted with the words “THE TOTE BAG” for use on “handbags; carry-all bags; leather bags; reusable shopping bags; tool bags.”
In the Office action on June 13, USPTO examining attorney David Elton called on Guangzhou Xiaolingwan Trading (“GXT”) to disclaim the wording “THE TOTE BAG” in its application because it is “merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.” Since the identification of the goods and specimen of use at issue show that GXT’s goods (tote bags) fall within the dictionary definition of tote bags (“large 2-handled open-topped bags”), the wording in the mark THE TOTE BAG merely describes features of the applied-for goods.
Additionally, the USPTO advised China-based GXT to provide a more accurate description of the mark, such as, “The mark consists of a stylized tote bag design with the wording “THE TOTE BAG” in stylized font superimposed thereon.”
The most interesting point of contention, however, is the advisory that the USPTO provided to GXT in light of more than a dozen previously-filed applications for marks that, if registered, might cause GXT’ s application to be rejected because of a likelihood of confusion with the registered mark(s). As for what those potentially problematic applications for registration are, Elton pointed to 18 pending applications filed by Marc Jacobs, which is primarily looking to register …
> The configuration of its viral tote (“a stylized tote bag design consisting of a square body and parallel handles that extend from the sides of its pouch”);
> The “THE TOTE BAG” word mark; and
> A combination of the two (namely, “a stylized tote bag design consisting of a square body and parallel handles that extend from the sides of its pouch with the stylized wording ‘THE TOTE BAG’ centered within the bag”).
According to the applications, Marc Jacobs is using and/or intends to use those marks across an array of classes of goods/services, including “wallets, business card cases”; jewelry; clothing; and retail store services. Not on that list (because its counsel is looking to avoid an obvious refusal): Handbags.
THE BIGGER PICTURE: Hardly an isolated issue, the USPTO pushback comes amid a larger legal squabble between Marc Jacobs and GXT, which filed suit late last year, accusing the LVMH-owned fashion brand of “intentionally and knowingly” making “fraudulent” trademark infringement assertions with the aim of getting Amazon to remove GXT’s listings of bags that closely mirror the viral Marc Jacobs TOTE BAG bags. In the complaint that it filed with a New York federal court in November 2023, GXT claims that in order to lodge a trademark-centric complaint with Amazon about the “infringing” bags at issue, Marc Jacobs relies on two intent-to-use trademark applications for THE TOTE BAG word mark and a figurative mark for use on “wallets and card cases.”
The problem, according to GXT, is that Marc Jacobs “knows that if it applied [to register] THE TOTE BAG for [use on] tote bags, it would get a strong genericness refusal from the USPTO,” and yet, it “still decided to use these two pending-review marks” to successfully file a complaint with Amazon, which ended up delisting the lookalike tote bags.
In a motion to dismiss in February, Jacobs urged the court to toss out the case, arguing that GXT has failed to sufficiently plead its tortious interference and trade libel claims.
Interestingly enough, the Office action that the USPTO issued to GXT – which lodged its application for the TOTE BAG word + bag configuration combo mark for use on handbags just before filing its lawsuit against Marc Jacobs– seems to undermine its genericness argument (for now at least). After all, genericness is not one of the grounds that the USPTO cited as a reason for preliminarily refusing to register the mark.
The case is Guangzhou Xiao Ling Wan Trading Co. Ltd. v. Marc Jacobs Trademarks LLC, 1:23-cv-09975 (SDNY).
Updated
July 15, 2024
The parties filed a STIPULATION OF VOLUNTARY DISMISSAL. “It is hereby stipulated and agreed by and between the parties and/or their respective counsel(s) that the above-captioned action is voluntarily dismissed, with prejudice against the defendant(s) Guangzhou Xiao Ling Wan Trading Co., Ltd pursuant to Rule 41(a)(1)(A)(ii) of the Federal Rules of Civil Procedure. Document filed by Marc Jacobs Trademarks LLC. Proposed document to be reviewed and processed by Clerk’s Office staff (No action required by chambers).”
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