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.
Following review of the trademark application, the USPTO refused the application arguing that the trademark is both functional and non-distinctive. 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 issued and made final a new generic configuration refusal.
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 on January 19, 2022.
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).
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.
Read the full article originally published by the Ontario Bar Association’s Information Technology and Intellectual Property Law Section here.