The four-month legal saga between fashion mogul Tory Burch and her ex-husband Christopher Burch ended in early January with settlement talks. Although we will not get a chance to see this fashion-inspired “war of the roses” play out in court, there is certainly a legal lesson or two to be learned from this battle of the brands.
In early January, Lululemon Athletica lost their appeal to the TTAB over the registration of the wave design shown below.
The TTAB, affirming the decision of the Examining Attorney, held that the wave design was merely an ornamental decoration and that the public would not perceive the applicant’s mark as an indicator of source. The TTAB stated that such a mark could only warrant trademark registration if the applicant could show the mark had inherent or acquired distinctiveness, or that the applicant has used or registered the design in a non-ornamental manner for other goods or services.
A 2011 action alleging that L’Oreal USA Inc. and L’Oreal USA Products Inc, both are subsidies of L’Oreal SA, has been granted certification for two subclasses claiming that L’Oreal failed to warn purchasers of flammability in its Garnier Fructis Sleek & Shine Anti-Frizz Serum (Product). Federal Court in the Central District of California certified the action.
According to WWD, François-Henri Pinault shot back today against accusations that his luxury group supports plagiarism at a press conference following the publication of PPR’s 2011 results. Pinault was addressing the accusations Louboutin made to French daily Libération, where Louboutin compared PPR to counterfeiters and claimed the group was trying to destroy his independent label. Pinault responded to the accusations by indicating his confidence that Yves Saint Laurent would win the right to continue selling shoes with red soles in the ongoing case against Christian Louboutin. According to the PPR chairman and chief executive officer, “We won the first proceedings in quite precise, clear terms and I am therefore very confident with regard to this case, even if I regret it, because these are two great houses and I think we have better things to do than to fight in court over a question of color.”
In 2009, Gucci America Inc. filed suit in federal district court in Manhattan against Guess Inc. for alleged trademark infringement. According to WWD, a federal district court judge in Manhattan has denied Guess Inc.’s request to dismiss and is allowing certain claims of Gucci America Inc. to proceed. Included among those claims allowed to proceed are regarding a “script Guess logo” and a claim over a “green-red-green stripe” which are proceeding due to the existence of material factual issues. However, the district court judge did rule in Guess’ favor regarding some of Gucci’s dilution claims. These claims involve the “Square G” and “Quattro G” designs. The judge ruled that Gucci failed to provide any credible evidence to raise any issue that actual dilution has occurred so those claims against Guess were dismissed.
WWD reports that the National Hockey League’s licensing efforts have been literally paying off: merchandise sales enjoyed a 15% climb last season and a 15% increase this year.
The NHL’s VP of consumer products licensing, James Haskins, attributes the growth to the influx of marquee players, higher television ratings, but also consumers who “want more out of what they are purchasing.”
Gucci once again came in as the most searched fashion brand, according to the engineers over at the Microsoft-owned Bing. The search engine’s Trends Report has Gucci as king of the mountain for the second year in a row, while the competitors have varied.
Ralph Lauren came in second on the list, with Chanel dropping in the ranks from last year’s second slot to this year’s fifth spot.
While it seems clear that Gucci is at the forefront of Bing searchers’ fashion minds, there is but one question waiting to be answered: What are Google users searching for? The Gucci trademark is one of the most widely recognized marks – like Ralph Lauren’s Polo Player, Chanel’s Cs, and Louis Vuitton’s LVs. There are 428,000,00 sites that come up when someone searches for Gucci in Google and 81,700,000 sites in a Bing search for Gucci – but only one is Gucci’s official site. Wikipedia-type sites and authorized Gucci retailers aside, it is more than likely that most of those almost half-trillion sites are counterfeit sites. Being the number one searched brand on an web search engine has its perks, but it also means that brand must diligently protect itself from hundreds of millions of imitators.
Monica Botkier certainly does not agree. As previously noted, Botkier, the contemporary womenswear brand that was launched in 2004, has filed a cease and desist letter against Sears Holding Co., the major retailer of Kardashian Kollection. Monica Botkier, the handbag designer for the brand, is alleging that the particular bag in question- the Kardashian’s leopard print faux leather purse with slanted pockets and draw string sides, (pictured right), is a knock off of her own “Trigger Clyde” satchel which debuted in Fall 2009, (pictured left).
Monica Botkier has wasted no time in protecting her designs. When she discovered that the Kardashian’s new clothing line, Kardashian Kollection, included a handbag that she thinks looks nearly identical to Botkier’s ‘Clyde’ handbag, she issued a cease and desist letter. Sears, the department store that exclusively carries the Kardashian’s line, promptly removed the bag in question from its website.
Botkier’s ‘Clyde’ handbag is designed with a combination of fine leather, stitching, and subtle additions that allegedly make the bag distinctive. The particular additions made to the ‘Clyde’ handbag are the slanted zippers and drawstring ties on the side, which contribute to the bags shape. Curiously enough, these same additions of slanted zippers and drawstring ties are found on the Kardashian’s leopard print handbag. According to CounterfeitChic, the distinctive shape of Botkeir’s bag is likely to ‘add up to trade dress protection.’
In order for Botkier to succeed in a trade dress claim, she must be able to show that the Kardashian’s bag has copied the elements of the ‘Clyde’ bag which are nonfunctional. Botkier must also show that these elements are recognized by the public as belonging to the ‘Clyde’ bag. Botkier’s stand against Sears and the Kardashian’s handbag, is representative of the struggle many designers face, especially when it comes to handbags. Botkier is one of many designers that seeks protection of her designs in an effort to prevent department stores from selling a similar product at a much lower cost.