First red soles, now woven leather handbags. Trademark law is catching up to what aficionados have known for a long time—you don’t always need a logo to identify a fashion house’s signature pieces.
Last week, the Trademark Trial and Appeal Board (“TTAB”) ruled that Bottega Veneta, an Italian fashion brand known for its supple leather handbags and understated luxury, is entitled to a trademark registration for its signature “weave design” for handbags and other accessories. In re Bottega Veneta International S.a.r.l., no. 77219184 (TTAB Oct. 4, 2013). Unlike a traditional logo, the Bottega Veneta mark requires a tutored eye and is very specific: the registration is for “a configuration of slim, uniformly-sized strips of leather, ranging from 8 to 12 millimeters in width, interlaced to form a repeating plain or basket weave pattern placed at a 45-degree angle over all or substantially all of the goods.” While this might sound obscure, Bottega Veneta submitted substantial evidence that the company is well known for its “signature woven handbags”—and that among consumers of luxury goods, this particular woven design is “iconic” and readily identifies bags as originating from Bottega Veneta.
This follows last year’s Second Circuit decision that Christian Louboutin has a valid trademark in the red soles of its wildly popular pumps (provided they contrast with the upper portion of the shoe), another decision confirming the viability of non-logo trademarks for fashion design.
What does this mean for designers and manufacturers?
If you are a fashion designer who uses a signature design element, it may be worth developing into a trademark—which will require using the element consistently and obtaining public recognition for that signature style. This is known as “secondary meaning” and is essential for design trademarks. Also, any design element will have to pass the hurdle of “aesthetic functionality,” which, as explained in the Bottega Veneta decision, means showing that there are plenty of other design options available for other designers. In the case of Bottega Veneta, the TTAB considered that other handbag designers could use wider strips of leather, or create woven handbags out of other materials, or set the weave at a different angle, and thus found that the “weave design” is not aesthetically functional. Once you have been using your signature design for at least a few seasons, and have some recognition of the mark, contact a trademark attorney to begin the trademark registration process.
If you are a manufacturer of apparel or accessories, be wary when producing goods inspired by designers—a direct knock-off of a well known signature design element could infringe a registered trademark, exposing you to liability. However, it is equally important to recognize the limited nature of design mark protection. The TTAB emphasized in this most recent decision that its finding that the Bottega Veneta “weave design” is entitled to trademark protection was based on a very narrow reading of the scope of protection offered. Only uses of an “essentially identical design” would infringe the Bottega Veneta “weave design” mark.