TTAB CULT GAIA Trade Dress Application Denial Sets PrecedentMay 13, 2022
Trade dress is a sub-category of trademarks traditionally reserved for product packaging. However, it can also include product design itself if the design elements claimed are distinctive and allow the consumer to recognize a single source as the producer or seller of the goods. Well known product design cases include high heels with contrasting red soles, iconic electric guitar shapes, and the green color of night-time cold medicines.
It is a high bar to clear, as asserting registrable trade dress is stating that consumers will recognize your product as coming from you—and only you—without even seeing your brand name. With this in mind, it should come as little shock that relatively few registrations are granted. CULT GAIA’s Ark bag was no exception.
On March 29, 2022, the Trademark Trial and Appeal Board (TTAB) re-designated its January 19, 2022 decision In Re Jasmin Larian, LLC as precedential, forcing fashion designers and retailers to grapple with its implications for trade dress applications for product design. This case stemmed from the US Patent and Trademark Office’s (USPTO’s) refusal to register as trade dress the “Ark” bag design (pictured beneath as depicted in the TTAB opinion) sold under Jasmin Larian’s Los Angeles-based CULT GAIA brand.
The TTAB used a combination of Jasmin Larian’s own statements, online comments, foreign English-language fashion publications, sales of similar items by competitors that predate Jasmin Larian’s sales, and museum exhibits to hold that the bag is not only generic (a sufficient reason to reject the registration), but also that the design does not rise to the level of having “acquired distinctiveness.”
The primary takeaways for fashion brands looking to build an evidentiary record of acquired distinctiveness sufficient to register product packaging or design as trade dress are twofold. First, be careful what you say in the press, in interviews, and in documents or tags that accompany your goods. To prove your product’s design rises to the level of protectable trade dress, you have to show it is not generic. Jasmin Larian made multiple statements revealing that this bag design was essentially a recreation of a traditional Japanese picnic bag, which the TTAB used against her to help prove the design was popular long before her product debuted.
Second, when advertising on social media, be careful about posting hashtags or other identifying branding without a “look for” statement. The TTAB found that, despite Jasmin Larian’s large advertising expenditures, the advertising campaigns merely advertised the brand and its products, rather than leading customers to identify the bag’s features with the company. The TTAB stated, “[i]t is well established that without any advertising directing consumers to the identifiable features of Applicant’s bag, typically consumers are unlikely to notice that feature of trade dress design, let alone perceive…