The luxury Italian brand Bottega Veneta has been granted trademark protection for its weave design.
The Trademark Trial and Appeal Board of the US Patent and Trademark Office (the TTAB) has ruled in favor of Bottega Veneta and granted registration to the weave pattern trademark.
This is a very important decision for Bottega Veneta, given that the TTAB reversed the refusals made in 2009 of an application based on the Italian registration. According to the first instance decision, the mark was aesthetically functional and merely ornamental. Also, the description of the mark at the time appeared to be more expansive than the mark that the applicant wanted to register and therefore, the court refused registration.
During the appeal, the applicant limited the description of the mark which now consists of "a configuration of slim, uniformly sized strips of leather, ranging from 8 to 12 millimetres 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. Color is not claimed as a feature of the mark".
In addition, the applicant did not seek exclusive rights to all weave designs for identified leather goods and submitted a significant amount of evidence in support of its claim of acquired distinctiveness as a trademark, such as media coverage, declarations of consumers and advertising budget.
With its recent decision of 30 September 2013, despite the fact that such weave design is not inherently distinctive, the TTAB found that:
- the trademark has come to be recognized by consumers as a source indicator for Bottega Venetafs goods, and
- registering the mark would not have a significant effect on competition and, accordingly, a registration would not have a negative effect on the use of woven designs made from non-leather materials.
- The TTAB also made it clear that its decision was based on Bottega Veneta's extremely narrow application for the exact pattern. The scope of Bottega Veneta's protection only extends to identical or near-identical designs which replicate each of the features described above.
Accordingly, "bags and/or shoes that have a horizontal weave, or are not made of leather or materials that simulate leather, or have strips that are much wider than 8 to 12 millimeters, or have a weave pattern on only a portion of the product, or have a weave that is not a plain weave, are not persuasive evidence that third parties have a competitive need to use the particular weave design that applicant seeks to register" and are not affected by Bottega Veneta's trademark.
(US Patent and Trademark Office's Trademark Trial and Appeal Board – Application Serial No. 77219184 – filed June 29, based on the Italian registration, for classes 18 and 25)
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