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Volume 260—NO. 40
Fashion Law Monday, August 27, 2018

Non-Traditional Trademarks:
The Elusiveness of Branding a Trend
and sexual identity. Chopines, for
Olivera Medenica
example, were an early version of the

arlier this year, fashion brand By platform shoe that rose in popular-
Steven Madden, Ltd. filed a Medenica ity in 15th century Venice. They were
declaratory judgment action originally used as a clog, or overshoe,
against Jasmin Larian, LLC in a trade- to protect a wearer’s shoes or dress
mark dispute involving the latter’s from the muddy city streets. Some
Cult Gaia “Ark” bag, a structured Gucci’s blue-red-blue and green-red- accounts indicate that they were
handbag made of interlocking rigid green stripes for which it owns sev- initially worn by courtesans, with
strips arranged in a half-moon shape. eral trademarks for different catego- the height of the chopine intended
The dispute arose after Larian’s coun- ries of goods. to establish her highly visible pub-
sel had sent a cease and desist corre- What makes these cases unique is lic profile. Other accounts indicate
spondence to Madden requesting that plaintiffs’ proactive litigation strategy that in later years, the chopine was
it cease and desist from the marketing in seeking to invalidate a competitor’s worn by patrician Venitian women,
and sale of Madden’s virtually identi- non-traditional trademarks. These with the height of the chopine com-
cal “BShipper” bag. In its papers, Mad- affirmative measures usually assert mensurate with the level of nobility
den seeks a declaration that the “Ark” an argument that no fashion brand and grandeur of the wearer.
design is generic and not protectable should have a monopoly over a ubiq- In 17th century France, King Louis
because it “slavishly copies the tra- uitous fashion design. It also reflects a XIV regulated the wearing of red
ditional Japanese bamboo picnic bag push back on increasingly aggressive heels as an expression of political
design… from the 1940s.” litigation tactics by fashion brands privilege. During his reign, only
Last year, Forever 21, Inc. also filed seeking to blur the lines between a those granted access to his court
a declaratory judgment action after non-protectable fashion trend and were allowed to wear red colored
its receipt of several cease and desist protectable, though non-traditional, heels. The color red was purport-
correspondences from Gucci Amer- trademarks. edly chosen by the King as emblem-
ica, Inc. In its letters, Gucci accused Fashion Trends atic of blood and his ability to crush
Forever 21 of selling products bearing v. Trademarks his enemies. The King’s heels were
purportedly as high as five inches,
Olivera Medenica is a partner at Dunnington Throughout history, fashion and he issued an edict in 1673 that
Bartholow & Miller and a member of the firm’s intel-
lectual property, advertising, art and fashion law
trends have reflected social attitudes forbid anyone from owning heels
practice areas. toward class status, wealth, power higher than his.
Monday, August 27, 2018

The same ideals of social exclusiv- brand owner continues to use it. If showing of secondary meaning to
ity, wealth and privilege are reflected a brand owner can establish design be eligible for protection. When in
in modern day trends, such as the as a source indicator, it can serve as doubt as to whether a trade dress is
Louboutin red sole shoe, the Birkin a powerful detractor against com- product packaging or product design,
Bag, or Vetements’ highbrow-lowbrow petitors seeking to piggyback on the court advised to err on the side
leisure wear. As anyone interested in the brand’s commercial success. of caution “and classify ambiguous
purchasing these items will quickly But a trend may not necessarily be trade dress as product design, there-
discover, the wearer is as much a trademark, and a trademark may by requiring secondary meaning.”
interested in the aesthetics of the not necessarily be a trend. Non-tra- The principles of Wal-Mart were
purchase as the ability to advertise ditional trademarks can only fulfill quickly adopted by fashion brands.
her means to obtain it. their purpose if they function as a In Adidas-Salomon v. Target, 228 F.
While a trend may be lucrative for a trademark, or source indicator. Supp. 2d 1192 (D. Or. 2002), Adidas
fashion house riding its wave, it does claimed that various features of its
Trademark Protection
not necessarily mean that a brand, sneakers, such as the three stripes
Extended To Design
or source indicator, has been estab- on the side of its shoe, as well as its
lished within the traditional param- In the past 20 years, courts have “shell toe” and back heel section,
eters of our trademark jurisprudence. subtly shown a willingness to expand were distinctive and therefore served
Fashion design is ill-fitted for our intel- traditional concepts of trademark pro- as source-identifiers. Target sold
lectual property framework. From a tection to fashion designs with trade similar shoes, but with four stripes
copyright perspective, only features dress and non-traditional trademarks. instead of three. Citing to Wal Mart,
of a design that are conceptually sepa- Wal-Mart v. Samara Bros., 529 U.S. Adidas argued that its design consti-
rable from the utilitarian aspect of 205, 207 (2000), was the first case in tuted “product packaging” whereas
a design are copyrightable. Where which the Supreme Court recognized Target argued it was “product design,”
clothes are functional, this leaves that an unregistered trade dress could thus requiring a showing of second-
not much by way of copyright pro- extend to clothing designs. ary meaning. The court agreed with
tection. As for design patents, they Plaintiff Samara was a designer of Target, but ultimately found that Adi-
can in some circumstances protect children’s clothes who sued defen- das had established secondary mean-
fashion designs where the design is dant Wal-Mart for selling knock-offs ing and concluded that Target’s shoes
an invention that is both novel and of plaintiff’s fashion designs. In an infringed upon Adidas’ trade dress.
nonobvious. But again, given that opinion written by Justice Antonin In LVL XIII Brands v. Louis Vuitton
clothes have been around for a while, Scalia, the court drew a distinction Malletier, 209 F. Supp.3d 612 (S.D.N.Y.
that may make it difficult to isolate between two types of trade dress: 2016) plaintiff LVL XIII (pronounced
aspects of the design that are innova- product-packaging trade dress, or “Level 13”) sued defendant Louis Vuit-
tive. Design patents are also costly how the product is “dressed”; and ton for trademark infringement, argu-
and time intensive, which may not product design trade dress, or how ing that Louis Vuitton had infringed
necessarily work given the potentially the product is designed (i.e. how it plaintiff’s trade dress by affixing a
limited lifecycle of a trend. looks). The court held that product metal toe plate on its sneakers. As
Trade dress and non-traditional packaging trade dress can be inher- in Adidas, plaintiff argued that its
trademarks, however, present oppor- ently distinctive, and thus protectable metal toe plate was distinctive prod-
tunities for protection that may as a trademark without a showing of uct packaging that did not require a
not otherwise exist in other tradi- secondary meaning. The court, how- showing of secondary meaning. The
tional intellectual property frame- ever, found that “[d]esign, like color, court disagreed and found that it was
works. A trademark is permanent, is not inherently distinctive. Product instead product design trade dress
it endures indefinitely as long as the design trade dress thus requires a because “the [claimed mark] serves
Monday, August 27, 2018

a primarily aesthetic function: mak- Which brings us back to the “Ark” in obtaining a registration. In re Bot-
ing [the plaintiff’s] sneakers appear bag and Gucci’s three stripes. Even tega Veneta International S.A.R.L.,
more enticing.” LVL XIII was unable to before the declaratory judgment 2013 WL 5655822 (TTAB 2013). The
show secondary meaning, and thus action discussed above was filed, board’s decision however was limited
its trademark claim was unsuccessful. Cult Gaia’s trademark applica- to the narrow description provided
In the famous Louboutin “red sole” tion was denied registration at the by Bottega Veneta (i.e. slim strips
case, Christian Louboutin v. Yves Saint USPTO based upon functionality. A of leather, 8-12 millimeters in width,
Laurent Am. Holding, 696 F.3d 206 (2d determination that an applied-for interlaced in a basket weave pattern
Cir. 2012), the issue was not packaging configuration mark is functional at a 45 degree angle).
or design, but rather whether color constitutes an absolute bar to regis- Should Cult Gaia choose to further
in a fashion design is protectable as tration, regardless of any evidence prosecute its application, it could
a trademark. Louboutin had obtained of acquired distinctiveness. 15 USC theoretically prevail in registering
a trademark from the United States its mark if it can demonstrate that
Patent and Trademark Office (USPTO) its design would not have a signifi-
on bright red lacquer placed on the While a trend may be lucra- cant effect on competition. In other
outsoles of Louboutin’s high heels. tive for a fashion house riding words, that there is no competitive
Yves Saint Laurent (YSL) also used its wave, it does not neces- need for others to use the particular
red lacquer, but unlike Louboutin, sarily mean that a brand half-moon design that is the subject
matched the remainder of the shoe of its application.
has been established within
to the color of the outsole. As for Gucci’s three stripes, it
The U.S. Court of Appeals for the
the traditional parameters of remains to be seen whether For-
Second Circuit held that a single color, our trademark jurisprudence. ever 21 will ultimately prevail in its
or the placement of a single color in a Fashion design is ill-fitted declaratory judgment action. The
fashion design, can serve as a trade- for our intellectual property issues raised in the Forever 21 case
mark if it acquires secondary mean- framework. are particularly interesting to the
ing. It further found that Louboutin extent they challenge Gucci’s ability
had established secondary meaning 1052(e)(5), 1091(c). This determina- to transfer ownership of its three
through extensive evidence show- tion was based upon the examiner’s stripes across different products, well
ing over twenty years of advertising finding that Cult Gaia’s design, which beyond the scope of its registration.
expenditures, media coverage and consists of a “half-moon shaped car- It also raises the question of whether
sales success. The court, however, rying-bag” is “merely an iteration or the decorative use of three stripes
did not find that YSL’s monochro- appropriation of a style of bag from constitutes trademark infringement.
matic shoe infringed upon Loubou- the Japanese culture.” In other words, Ultimately, resolution of the case will
tin’s red sole shoe since Louboutin’s if Cult Gaia were granted a trademark hinge on Gucci’s ability to show sec-
trademark was limited to a red out- it would preclude others from design- ondary meaning, as prescribed by the
sole in sharp contrast to the color of ing vintage “generic Japanese lunch Supreme Court in Wal-Mart. Forever
the remainder of the shoe. bag[s] common in fishing communi- 21 filed a summary judgment motion
While plaintiffs in these cases ties for decades.” in July, and the matter is set for a
achieved various degrees of suc- Cult Gaia’s outcome is reminis- hearing at the end of August.
cess, these outcomes unequivo- cent of Bottega Veneta International
cally benefit future fashion brands S.a.r.l.’s initial USPTO refusal for its
seeking to protect designs beyond well-known leather basket weave
Reprinted with permission from the August 27, 2018 edition of the NEW
traditional two dimensional word design. Bottega Veneta subsequently YORK LAW JOURNAL © 2018 ALM Media Properties, LLC. All rights
reserved. Further duplication without permission is prohibited. For information,
or logo marks. challenged the refusal and succeeded contact 877-257-3382 or # 070-09-18-03