TTAB finds that Bottega Veneta's weave design has acquired distinctiveness

In In re Bottega Veneta International Sarl (Serial No 77219184, September 30 2013), in a non-precedential opinion, the Trademark Trial and Appeal Board (TTAB) has addressed the issues of aesthetic functionality and failure to function as a trademark on grounds of ornamentation in an ex parte appeal filed by luxury goods manufacturer Bottega Veneta International Sarl. 

Bottega Veneta filed an application for the following mark:

The application was filed for goods in Classes 18 and 25 of the Nice Classification. The description of the mark that was in the record when the TTAB decided the appeal was:

"Colour is not claimed as a feature of the mark. The mark 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."

During prosecution of the application, Bottega Veneta amended the application to claim acquired distinctiveness. The examining attorney eventually made final his refusal to register the mark on the grounds that the applied for mark was functional and that it failed to function as a trademark because it was solely ornamental.

The TTAB first addressed whether or not the applied for design was functional. The examining attorney specifically stated that the functionality refusal was one of aesthetic functionality. The test to determine aesthetic functionality is whether the exclusive appropriation of the feature would put competitors at a significant non-reputation related disadvantage. The essential question was: is there a competitive need for this particular weave design?  

To support his position, the examining attorney attached over 1,500 pages of evidence that consisted mainly of third-party websites depicting items having a weave design. The bulk of the evidence showed weave designs on handbags and shoes. Although the evidence showing weave designs on these goods was substantial, it was too general to establish aesthetic functionality.

Bottega Veneta did not claim all weave designs, only the specific weave design detailed in its application. The examining attorney's evidence consisted of general weave designs and did not depict Bottega Veneta's specific design.

The TTAB found that there was not a competitive need for Bottega Veneta's detailed and specific weave design. In making this determination, the TTAB noted:

"Applicant has stated unequivocally that 'it is not claiming exclusive rights in every possible formation of a leather weave design…. Rather, it seeks to register a mark consisting of leather strips of specific dimensions and placed in a specific orientation.'”

The TTAB further noted that the applicant acknowledged that its rights in the applied for weave design may be relatively narrow.

In addressing the issues of competitive need, the TTAB also considered the examining attorney's argument that third parties were using the same weave. The TTAB dismissed this argument: 

"Accordingly, the very limited number of third-party uses of the particular weave design, where there is such overwhelming evidence of weave designs in general, and the possibility that some third parties adopted the weave design because of its association with applicant, creates some doubt as to whether there is a competitive need for the design that applicant seeks to register."

The TTAB concluded that the mark as applied for was not functional. However, it did state that it had doubts about functionality. In cases involving other grounds of refusal, the policy has been to resolve all doubts in favour of the applicant. The TTAB adopted this principle here.

The TTAB further noted that "publishing the mark will allow competitors to come forward to assert and prove that they do have a competitive needs to use the mark if, indeed, they have such a need". In concluding, the TTAB stated that its decision on aesthetic functionality was based on a narrow reading of the mark, and further stated that it analysed the issue of competitive need only as to essentially identical designs.

Next, the TTAB considered whether the applied for design even functioned as a mark. The examining attorney had established through his voluminous submissions that weave designs are common in the handbag and shoe industry. Bottega Veneta claimed acquired distinctiveness in its mark. The TTAB found that Bottega Veneta's evidence clearly established that consumers recognised the weave design as an indication of source.  The evidence submitted included:

• The handbags have been sold since 1975.
• From 2001 to 2007, sales of Bottega Veneta's goods in the United States reached $275 million. The applied-for weave design appeared in over 80% of these products.
• Advertising expenditures from 2001 to 2007 totalled $18 million.
• For over 35 years, Bottega Veneta's catalogues and advertisements have featured the weave design.
• Newspaper articles and magazine articles refer to Bottega Veneta's "signature" weave design,
• Public references to Bottega Veneta's weave design or describing third-party products as looking like Bottega Veneta's weave design.

This decision illustrates that it may be possible to overcome a functionality refusal if the mark is narrowly described. The more specific an applicant is in describing its mark, the greater chance of perhaps avoiding a functionality refusal.

Leigh Ann Lindquist, Sughrue Mion PLLC, Washington DC