Fashion House Bottega Veneta Scores Big Win at TTAB

Unlike many fashion companies that use the company name or well-known initials on their products to indicate source, Bottega’s leather goods use no such branding. Instead, Bottega’s purses, wallets, and related leather items, which can sell for upwards of $6,000 an item, often feature the company’s “signature” look, a box weave of slim strips of leather displayed at a 45 degree angle and covering all, or substantially all, of the product, as shown in the representative images at right.

Consumers know that when they see that distinctive box weave of leather, they are looking at a Bottega. Accordingly, in 2007 Bottega filed an application at the USPTO for this distinctive trade dress. The Examining Attorney refused the application, finding the box weave pattern was aesthetically functional and merely ornamental. Having invested millions in this trade dress, Bottega appealed the ruling to the TTAB. This month, Bottega won its appeal.

The Examining Attorney argued that the box weave design was aesthetically functional because competitors’ inability to use this design would put them at a significant non-reputation related disadvantage. The TTAB reviewed the Examining Attorney’s 1500+ pages of evidence showing third-party use of weave patterns on leather goods, but rejected the evidence as non-persuasive since it showed use of “weave designs generally, rather than the weave design described in the application.”

In other words, the weave patterns were different, either because the strips of leather were wider, were made of a different material, were not at a 45 degree angle, or they had some other distinguishing characteristic. For the limited evidence that the Examining Attorney provided showing third-party use of the identical or nearly identical weave pattern, the TTAB found that, if anything, this evidence showed competitors copied the design because it was uniquely associated with Bottega, and therefore the competitors were trying to profit off of Bottega’s reputation. Thus, the Examining Attorney failed to show that Bottega’s very specific iteration of the box weave design was aesthetically functional.

Next, the TTAB found the trade dress was not merely ornamental, rather it functions as a trademark to indicate the source of the goods. To overcome the ornamental refusal, Bottega submitted a claim of acquired distinctiveness. Bottega relied on its use of the weave design since 1975, and also submitted evidence that between 2001 and 2007 it spent over $18 million in advertising and had over $275 million sales in the US, with over 80 percent of the goods sold displaying the weave pattern. Bottega also submitted newspaper and magazine articles discussing Bottega’s “signature weave design,” as well as declarations from industry representatives about the widespread and instant recognition of Bottega’s weave design. The TTAB therefore had no trouble in concluding that Bottega had established a valid claim of acquired distinctiveness. In other words, when consumers see the particular box weave of leather at a 45 degree angle, they immediately know the item is made by Bottega.

Given the TTAB’s favorable ruling, Bottega’s application will be published for opposition in the coming weeks, meaning third parties that believe they may be damaged by registration of the mark can oppose its registration. Assuming no third parties oppose, the application should proceed to registration in due course.

While the TTAB ruling was a major victory for the fashion house, its scope is somewhat limited. The TTAB noted “our finding that the design is not aesthetically functional is based on a very narrow reading of the proposed mark, and the scope of protection to which it is entitled.” Assuming the mark proceeds to registration, Bottega will only be able to stop competitors from using an “identical or nearly identical design.” It likely cannot stop competitors from displaying a weave pattern with much thicker strips of leather, strips of different material, or a weave pattern displayed at a different angle/orientation.