Non-Traditional Trademarks: The Elusiveness of Branding a Trend

In 17^th century France, King Louis XIV regulated the wearing of red heels as an expression of political privilege. During his reign, only those granted access to his court were allowed to wear red colored heels. The color red was purportedly chosen by the King as emblematic of blood and his ability to crush his enemies. The King's heels were purportedly as high as five inches, and he issued an edict in 1673 that forbid anyone from owning heels higher than his.

The same ideals of social exclusivity, wealth and privilege are reflected in modern day trends, such as the Louboutin red sole shoe, the Birkin Bag, or Vetements' highbrow-lowbrow leisure wear. As anyone interested in purchasing these items will quickly discover, the wearer is as much interested in the aesthetics of the purchase as the ability to advertise her means to obtain it.

While a trend may be lucrative for a fashion house riding its wave, it does not necessarily mean that a brand, or source indicator, has been established within the traditional parameters of our trademark jurisprudence. Fashion design is ill-fitted for our intellectual property framework. From a copyright perspective, only features of a design that are conceptually separable from the utilitarian aspect of a design are copyrightable. Where clothes are functional, this leaves not much by way of copyright protection. As for design patents, they can in some circumstances protect fashion designs where the design is an invention that is both novel and nonobvious. But again, given that clothes have been around for a while, that may make it difficult to isolate aspects of the design that are innovative. Design patents are also costly and time intensive, which may not necessarily work given the potentially limited lifecycle of a trend.

Trade dress and non-traditional trademarks, however, present opportunities for protection that may not otherwise exist in other traditional intellectual property frameworks. A trademark is permanent, it endures indefinitely as long as the brand owner continues to use it. If a brand owner can establish design as a source indicator, it can serve as a powerful detractor against competitors seeking to piggyback on the brand's commercial success. But a trend may not necessarily be a trademark, and a trademark may not necessarily be a trend. Non-traditional trademarks can only fulfill their purpose if they function as a trademark, or source indicator.

Courts Slowly Expand Trademark Protection to Designs

In the past 20 years, courts have subtly shown a willingness to expand traditional concepts of trademark protection to fashion designs with trade dress and non-traditional trademarks. Wal-Mart v. Samara Bros., 529 U.S. 205, 207 (2000), was the first case in which the Supreme Court recognized that an unregistered trade dress could extend to clothing designs.

Plaintiff Samara was a designer of children's clothes who sued defendant Wal-Mart for selling knock-offs of plaintiff's fashion designs. In an opinion written by Justice Antonin Scalia, the court drew a distinction between two types of trade dress: product-packaging trade dress, or how the product is “dressed”; and product design trade dress, or how the product is designed (i.e. how it looks). The court held that product packaging trade dress can be inherently distinctive, and thus protectable as a trademark without a showing of secondary meaning. The court, however, found that “[d]esign, like color, is not inherently distinctive. Product design trade dress thus requires a showing of secondary meaning to be eligible for protection. When in doubt as to whether a trade dress is product packaging or product design, the court advised to err on the side of caution “and classify ambiguous trade dress as product design, thereby requiring secondary meaning.”

The principles of Wal-Mart were quickly adopted by fashion brands. In Adidas-Salomon v. Target, 228 F. Supp. 2d 1192 (D. Or. 2002), Adidas claimed that various features of its sneakers, such as the three stripes on the side of its shoe, as well as its “shell toe” and back heel section, were distinctive and therefore served as source-identifiers. Target sold similar shoes, but with four stripes instead of three. Citing to Wal Mart, Adidas argued that its design constituted “product packaging” whereas Target argued it was “product design,” thus requiring a showing of secondary meaning. The court agreed with Target, but ultimately found that Adidas had established secondary meaning and concluded that Target's shoes infringed upon Adidas' trade dress.

In LVL XIII Brands v. Louis Vuitton Malletier, 209 F. Supp.3d 612 (S.D.N.Y. 2016) plaintiff LVL XIII (pronounced “Level 13”) sued defendant Louis Vuitton for trademark infringement, arguing that Louis Vuitton had infringed plaintiff's trade dress by affixing a metal toe plate on its sneakers. As in Adidas, plaintiff argued that its metal toe plate was distinctive product packaging that did not require a showing of secondary meaning. The court disagreed and found that it was instead product design trade dress because “the [claimed mark] serves a primarily aesthetic function: making [the plaintiff's] sneakers appear more enticing.” LVL XIII was unable to show secondary meaning, and thus its trademark claim was unsuccessful.

In the famous Louboutin “red sole” case, Christian Louboutin v. Yves Saint Laurent Am. Holding, 696 F.3d 206 (2d Cir. 2012), the issue was not packaging or design, but rather whether color in a fashion design is protectable as a trademark. Louboutin had obtained a trademark from the United States Patent and Trademark Office (USPTO) on bright red lacquer placed on the outsoles of Louboutin's high heels. Yves Saint Laurent (YSL) also used red lacquer, but unlike Louboutin, matched the remainder of the shoe to the color of the outsole.

The U.S. Court of Appeals for the Second Circuit held that a single color, or the placement of a single color in a fashion design, can serve as a trademark if it acquires secondary meaning. It further found that Louboutin had established secondary meaning through extensive evidence showing over twenty years of advertising expenditures, media coverage and sales success. The court, however, did not find that YSL's monochromatic shoe infringed upon Louboutin's red sole shoe since Louboutin's trademark was limited to a red outsole in sharp contrast to the color of the remainder of the shoe.

While plaintiffs in these cases achieved various degrees of success, these outcomes unequivocally benefit future fashion brands seeking to protect designs beyond traditional two dimensional word or logo marks.

Which brings us back to the “Ark” bag and Gucci's three stripes. Even before the declaratory judgment action discussed above was filed, Cult Gaia's trademark application was denied registration at the USPTO based upon functionality. A determination that an applied-for configuration mark is functional constitutes an absolute bar to registration, regardless of any evidence of acquired distinctiveness. 15 USC §§1052(e)(5), 1091(c). This determination was based upon the examiner's finding that Cult Gaia's design, which consists of a “half-moon shaped carrying-bag” is “merely an iteration or appropriation of a style of bag from the Japanese culture.” In other words, if Cult Gaia were granted a trademark it would preclude others from designing vintage “generic Japanese lunch bag[s] common in fishing communities for decades.”

Cult Gaia's outcome is reminiscent of Bottega Veneta International S.a.r.l.'s initial USPTO refusal for its well-known leather basket weave design. Bottega Veneta subsequently challenged the refusal and succeeded in obtaining a registration. In re Bottega Veneta International S.A.R.L., 2013 WL 5655822 (TTAB 2013). The board's decision however was limited to the narrow description provided by Bottega Veneta (i.e., slim strips of leather, 8-12 millimeters in width, interlaced in a basket weave pattern at a 45 degree angle).

Should Cult Gaia choose to further prosecute its application, it could theoretically prevail in registering its mark if it can demonstrate that its design would not have a significant effect on competition. In other words, that there is no competitive need for others to use the particular half-moon design that is the subject of its application.

As for Gucci's three stripes, it remains to be seen whether Forever 21 will ultimately prevail in its declaratory judgment action. The issues raised in the Forever 21 case are particularly interesting to the extent they challenge Gucci's ability to transfer ownership of its three stripes across different products, well beyond the scope of its registration. It also raises the question of whether the decorative use of three stripes constitutes trademark infringement. Ultimately, resolution of the case will hinge on Gucci's ability to show secondary meaning, as proscribed by the Supreme Court in Wal-Mart. Forever 21 filed a summary judgment motion in July, and the matter is set for a hearing at the end of August.

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Olivera Medenica is a partner at Dunnington Bartholow & Miller and a member of the firm's intellectual property, advertising, art and fashion law, international, and litigation and arbitration practice areas.