United States: TTAB Sustains Opposition To Basket Weave Design For Footwear

Last Updated: June 20 2019
Article by John L. Welch

The Board sustained an opposition to registration of the product configuration mark shown below, for footwear in class 25, on the ground of ornamentality and lack of acquired distinctiveness. In September 2013, the Board reversed a refusal to register the applied-for mark, finding the design not to be aesthetically functional under Section 2(e)(5), and not to be mere ornamentation in view of its acquired distinctiveness. [TTABlogged here]. The Board there emphasized that its ruling on non-functionality was "based on a very narrow reading of the proposed mark, and the scope of the protection to which it is entitled." The application was then published for opposition, and this proceeding ensued. Marc Fisher, LLC v. Bottega Veneta, Opposition No. 91214253 (June 4, 2019) [not precedential) (Opinion by Judge Cindy B. Greenbaum).

The opposed application states that the mark "consists of 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." Because the applied-for mark is a product configuration, it may be registered only upon a showing of acquired distinctiveness. Thus applicant sought registration under Section 2(f).

The Board acknowledged the Board's finding in 2013 that "applicant has a heavy burden to demonstrate that its applied-for weave design would be recognized as a trademark" because the record demonstrated frequent use of woven leather designs, "and particularly designs in plain weave," for handbags and shoes. The Board also observed that applicant has the "ultimate burden of persuasion" as to acquired distinctiveness, which it must meet by a preponderance of the evidence.

Based on Mr. Fisher's testimony and Opposer's evidence, discussed below, concerning the history of weave designs for shoes, Mr. Fisher's personal experience with using weave designs for shoes that he designed and manufactured in the 1980s and 1990s, and the third-party uses to which he testified, including the 21 third-party shoes Opposer made of record, we find that Applicant's burden is heavy, indeed.

Although the prosecution file of the opposed application is automatically of record in this opposition, the Board did not consider the declarations in the file to be testimony because they were not executed during the assigned testimony period. See Robinson v. Hot Grabba Leaf, LLC. The exhibits attached to the declarations were at least ten years old and therefore have little or no probative value regarding recent customer perception. They also suffered from a hearsay problem.

Opposer's founder, Marc Fisher, "consistently and repeatedly testified that the proposed mark is a woven leather basket weave that commonly was used on footwear in the 1980s and 1990s and continues to be used on footwear ...." Opposer submitted 21 third-party shoes having a weave design that "falls within the parameters of the applied-for mark."

Applicant contended that some of these shoes did not fall squarely within the description of applicant's mark: for example, the strips might be 6 or 7 millimeters instead of 8. Mr. Fisher testified that a one millimeter difference would not be noticed: "A millimeter is like a thread."

In other words, because ordinary footwear consumers do not typically bring a ruler with them when they shop for shoes, and there is no evidence that they are able to recognize the width of leather strips within millimeters, they will rely on a general impression and will likely not be able to distinguish whether a particular shoe has strips of leather that are a few millimeters within range of Applicant's claimed width of 8-12 millimeters.

Similarly, consumers would not be able to tell whether the leather strips are precisely at a 45 degree angle. And the phrase "all or substantially all" is "open to debate as to its limiting effect." The Board observed that these third-party shoes do not have to be identical to the applied-for mark in order to have probative value on the issue of acquired distinctiveness.

The Board recognized that it was reaching a different conclusion than that reached in 2013, but it pointed out that the record evidence is different here. "Simply put, we are not bound by the 2013 decision."

Applicant claimed that the third-party shoes are knock-offs or infringements of its design. The Board disagreed based on the evidence, which defied applicant's claim that its use of the design is, or has ever been, substantially exclusive. Moreover, applicant has taken no action to police its mark, and the existence of these third-party shoes make it less likely that consumers associate the design with applicant.

Applicant pointed to its use of the design since 1975, claiming it to be its "signature" design. The Board observed, however, that "long and continuous use alone is insufficient to show secondary meaning where the use is not substantially exclusive." Likewise, applicant's sales and advertising figures may demonstrate the popularity of the products but without more, they do not prove that the design serves as a source indicator.

Notably, applicant provided no evidence of "look for" advertising, which undermined its Section 2(f) claim. Nor did it provide consumer testimony, relying instead on the testimony of one of its managers as to the popularity of its products. The Board, however, found her testimony about consumer perception to be mere hearsay.

Finally, the Board noted applicant's ownership of a registration for the same mark in class 18 (which registration issued after the 2013 decision). Although Rule 2.41(a)(1) allows the USPTO to accept an applicant's ownership of an active prior registration for the same mark as evidence of acquired distinctiveness, provided that the goods are "sufficiently similar," the Rule states that additional evidence may be required "in appropriate cases." Applicant provided no evidence that handbags and footwear are "sufficiently similar" such that the prior registration "would even be a factor for us to consider."

Based on the record as a whole, the Board concluded that applicant had failed to overcome opposer's prima facie case of lack of acquired distinctiveness, and it therefore sustained the opposition. The Board found it unnecessary to reach opposer's claim if aesthetic functionality.

The TTABlog

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions