May 2, 2022
Dubbed as the Instagram “it” bag in 2016, Cult Gaia’s “Ark” bag design was recently refused trademark registration in the United States following the brand’s five-year battle to obtain registration for the design of its bag.
On July 10, 2017, Cult Gaia filed a trademark application with the United States Patent and Trademark Office (USPTO) for the 3D configuration and design - also known as trade dress - of its Instagram-famous Ark bag. The trademark application came years after the initial launch of the Ark bag in 2013, once the bag and the Cult Gaia brand began garnering the attention of fashion socialites, influencers, and celebrities.
Image source: USPTO Trademark Status & Document Retrieval page (Serial No. 87522459)
Following review of the trademark application, the USPTO refused the application arguing that the trademark is both functional and non-distinctive. A feature is functional if it is “essential to the use or purpose of the [product]”. The USPTO Examiner argued that the trademark application seeks registration of a “design of a handbag” for handbags, where the design is a classic shape and style of carrying bag for personal use. Further, the Examiner states that the mark consists of a non-distinctive product design that is not registrable without sufficient proof of acquired distinctiveness, specifically stating that consumers are aware of Japanese bamboo half-moon shaped carrying-bags, and the Cult Gaia mark is merely an iteration or appropriation of a style of bag from the Japanese culture.
Cult Gaia filed a response to the refusal, which included evidence and a declaration sworn by Jasmin Larian, the founder and CEO of Cult Gaia, arguing against the objections. With respect to the functionality of the trade dress, Cult Gaia argued that “[a] design feature of a particular article is ‘essential’ only if the feature is dictated by the functions to be performed; a feature that merely accommodates a useful function is not enough.” Therefore, while a handbag may be “functional” in that it is directed to perform the function of holding an individual’s items inside of it, only certain configurations that allow an object to work better are functional. Cult Gaia highlighted that none of the elements of the trade dress contribute to the trademark’s “useful function” of holding an individual’s items inside of it. Second, Cult Gaia argued that the applied-for trademark is distinctive for the following reasons: (a) the company has engaged in five years of substantially exclusive and continuous use of the applied-for trademark in association with its handbags (and that such use alone provides substantial prima facie evidence of acquired distinctiveness), (b) Cult Gaia has used, advertised, and promoted the trademark extensively in connection with its business to ensure that consumers recognize the trade dress as source-identifying, (c) the Ark bag has had commercial success, (d) there has been extensive, unsolicited media covered referencing the Ark bag, and (e) there has been evidence of intentional copying.
Cult Gaia’s arguments were not sufficient to convince the Examiner that the trademark was not in fact functional or non-distinctive. The Examiner maintained both objections, stating that if an applied-for configuration mark is functional, it constitutes an absolute bar to registration regardless of any evidence of acquired distinctiveness. In determining functionality, the Examiner considered factor 3 and 4 of the following “Morton-Norwich factors”:
The existence of a utility patent disclosing the utilitarian advantages of the design sought to be registered.
Advertising materials of the applicant that tout the design’s utilitarian advantages.
The availability to competitors of alternative designs.
Facts indicating that the design results in a comparatively simple or inexpensive method of manufacture.
With respect to factor 3, the Examiner reiterates that the Ark bag’s basic design and style is common and a part of the marketplace for such bags. Moreover, with respect to factor 4, the use and construction of materials, namely the “thin, uniformly-sized strips” allow for items to remain in the bag and allow for simpler manufacturing by hand and machine.
In considering non-distinctiveness, the Examiner maintained that the Ark bag’s design is incapable of functioning as an indicator of source because it is a basic design commonly used for the relevant goods, and further cited Vogue magazine, “You’ve seen it before - that distinctive semi-circular shape, the cage effect, those handles, the slightly retro touch.”
Cult Gaia moved on to file a 41-page written response to the maintained refusals, with over 1000 pages of evidence in response to the Examiner’s objections. The response was still not sufficient to overcome the objections. In fact, upon Cult Gaia’s request for reconsideration, new issues were raised, specifically, that the applied-for product design is generic.
Following six office actions spanning a five-year timeline, the Examiner withdrew the functionality objection. Though a small win for Cult Gaia, the Examiner maintained and continued the non-distinctive product design refusal and made final the generic configuration refusal.
On June 30, 2021, Cult Gaia filed an appeal in support of its trademark application to register the trade dress. Cult Gaia brought forth similar arguments to those already raised, relating to both the genericness and non-distinctiveness refusals. For instance, Cult Gaia argued that the Ark bag is not generic because (i) novelty is not a requirement for trade dress protection, and (ii) the Ark Bag design is far narrower than the general construct or appearance of “Japanese bamboo” bags. Additionally, Cult Gaia argued that the evidence provided by the Examiner regarding the commonality of the design of the Ark bag “at best, is that at some point in time, in an undefined market, from an unknown source, there existed a bag design that resembles the Ark Bag design. This evidence can hardly be considered clear evidence [...]”. Regarding acquired distinctiveness, Cult Gaia argued that the sheer volume of evidence is well beyond the prima facie showing required for a finding of acquired distinctiveness, and maintained many of the same arguments brought forth during prosecution of the trademark.
Irrespective of Cult Gaia’s best efforts to overcome both objections, a final decision of refusal was affirmed by the Trademark Trial and Appeal Board (TTAB) on January 19, 2022.
With respect to Cult Gaia’s arguments against genericness, the TTAB notes that small differences in appearance between the proposed trademark and the third-party handbags “are not noteworthy, do not change the overall commercial impression, or cause them to be dissimilar”, highlighting instances of handbags with similar designs including the following:
Image source: TTAB final decision of refusal
The TTAB further highlights instances where Jasmin Larian, the founder of Cult Gaia, is quoted stating that the proposed handbag design was a reproduction of a common Japanese bag design, as well as evidence that many comments by ordinary consumers when presented with a handbag embodying the proposed mark or a nearly identical design, remarked that they “recognized it as a common design with which they were long familiar and that emanates from numerous sources.” Importantly, the TTAB clarifies that while novelty is not a requirement for trade dress protection, it is required that the applied-for trademark function as an indicator of source, and that the evidence of record establishes that the applied-for design is a common handbag design.
With respect to Cult Gaia’s arguments against non-distinctiveness, though Cult Gaia has offered its Ark bag handbags embodying the mark since at least as early as January 27, 2013, the TTAB argued that this “moderately long use” of a mark is not necessarily persuasive on the issue of acquired distinctiveness, particularly in the case of a product design mark. Notably, though Cult Gaia argued that it displays its bag without any “visible label”, allowing the public to become familiar with the design of the bag being the “key visual cue” to identify the brand, the TTAB notes that the Cult Gaia Instagram tag also serves as a source identifying function. Last, though the substantial positive unsolicited media attention weighs in Cult Gaia’s favor, the TTAB concludes that this evidence alone does not equate to a finding of acquired distinctiveness and is insufficient to overcome the evidence in connection with the other factors, which on balance weigh against Cult Gaia.
For some non-traditional trademarks, such as a shape or product design, to function as a source indicator, it can take many years of well-targeted marketing, advertising and promotion to acquire distinctiveness sufficient to support registration on the Principal Register. As a result, certain fashion designs, such as the 3D configuration and design of a bag, may be the victim of fashion design piracy or fashion dupes during the period in which the product design develops as a source indicator under trademark law (and if the fashion design is not eligible for other forms of intellectual property protection).
Industrial design protection, which protects the aesthetic aspects of a functional article, can be a very attractive form of intellectual property protection for fashion designs, assuming that the product design meets the minimum requirements for registrability (such as novelty). For Cult Gaia, it appears that novelty of the design of the Ark bag may be a bar to industrial design registration.
Copyright protection, if applicable, can also be an effective means to protect design elements of a product. In Canada, section 64 of the Copyright Act, R.S.C., 1985, c. C-42, generally states that copyright is not enforceable against the designs of useful articles that are reproduced more than fifty times. [1] Though section 64(3) of the Copyright Act offers exceptions to this limitation, in which the “more than fifty” rule would not apply, such exemptions may not allow for copyright protection of the 3D shape or configuration of a bag (assuming a bag is a "useful article"). In the United States, unlike Canada, the copyright protection of fashion designs is rooted in a separability test, [2] which has been modified over the last number of years. In 2017, the US Supreme Court handed down a decision in Star Athletica LLC v Varsity Brands Inc et al, 37 S Ct 1002, which clarified federal copyright law surrounding whether features incorporated into the design of a useful article (in this case, the lines and chevrons of a cheerleading uniform) are eligible for copyright protection. The US Supreme Court held that features incorporated into the design of a useful article were eligible for copyright protection if they could be perceived as two- or three-dimensional works of art separate from the useful article and qualified as a protectable pictorial, graphic, or sculptural work - either on their own or fixed in some other tangible medium of expression - if they were imagined separately from the useful article into which they were incorporated.
Though copyright and industrial design registration can be helpful in obtaining protection and exclusivity of a particular design during the period in which the design acquires a level of distinctiveness sufficient for trademark protection, trade dress registration of a 3D configuration or design, given its ability to be renewed indefinitely, can be an exceptionally valuable tool for brands, particularly in the fashion industry. The refusal of Cult Gaia’s Ark bag trademark application serves as a reminder, however, of the difficulties that can arise in obtaining trademark protection of non-traditional trademarks.
_________
[1] Section 64(1) of the Copyright Act defines a “useful article” as an article that has a utilitarian function, where a utilitarian function refers to a function other than merely serving as a substrate or carrier for artistic or literary matter. This definition cues up section 64(2), which then establishes that copyright subsists in a design applied to a useful article only if the article is reproduced less than fifty times. Essentially, if you are creating more than fifty units of a piece of apparel or an accessory, it may no longer be protected by copyright.[2] The "seperability test" originated in the case Mazer v Stein, 347 US 201, and was later legislated in the US Copyright Act. In this case, the Respondents were engaged in the manufacture and sale of electric lamps. One of the respondents created original works of sculpture, from the models of which statuettes were made. The statuettes were used as bases for fully equipped electric lamps, which the Respondents sold. The Respondents submitted the statuettes, without any lamp components added, for registration under the copyright law as "works of art" or reproductions thereof, and it was determined that the statuettes were copyrightable.