Naturally, in the fashion industry, anytime a product becomes successful and/or trendy, the copying/imitation begins. Steve Madden started selling a bag called the BSHIPPER, unsurprisingly, at a lower price than Cult Gaia’s “Ark” bag which currently sells between $128 and $498. Larian’s attorneys sent a cease and desist letter on February 18, 2018 claiming that Madden was infringing on Larian’s intellectual property rights, including its trade dress rights in the “Ark” bag. The two bags shown in the Cease and Desist letter are reproduced below.
In the letter, Cult Gaia claims that the Ark trade dress includes the combination of the following features:
structured and flat front and back panels made of thin, uniformly-sized strips of rigid material (such as bamboo), arranged in an interlocking manner to form three concentric half circles creating a distinctive see-through sunburst design, topped by horizontal strips and a wide handle with a curved, tapering cutaway handle made of the same material, and a curved side panel made of interlocking pieces of the same material and in the same width as the pieces that make up the front and back panels. The spacers that connect the handle pieces are either clear or the same color as the bag.
Cult Gaia claims that its Ark bag distribution is limited to authorized distributors in order to ensure customer satisfaction and quality and that Steve Madden’s BSHIPPER bag is causing irreparable harm by diverting business, misleading consumers, and taking unfair advantage of Cult Gaia’s reputation and popularity.
Rather than stop selling the bags, Madden filed a lawsuit against Cult Gaia on March 6, 2018 asking the court in the Southern District of New York for a declaratory judgment holding that Madden does not infringe Cult Gaia’s trade dress rights. Madden argues that Cult Gaia’s claimed trade dress is generic because it merely describes a traditional, vintage, Japanese handbag design evidenced by the pictures and quotes below.
Madden also claims that Cult Gaia’s design is “ubiquitous in the handbag market” or is merely functional and does not warrant protection under the Lanham Act. Madden cites the following third parties that have sold allegedly identical bags since the 1960’s:
Given Madden’s evidence, Cult Gaia faces a tough challenge in establishing its trade dress rights in the Ark bag. Cult Gaia does not own a federal registration for its trade dress. In fact, Cult Gaia’s application for the trade dress was initially refused registration on October 5, 2017 on the grounds that the trade dress is functional and “consists of a nondistinctive product design or nondistinctive features of a product design.” Trade dress that is deemed functional is barred from registration on the Principal and Supplemental Register. In support of the refusal the Examining Attorney contends that the trade dress is functional because “[c]onsumers are aware of Japanese bamboo half-moon shaped carrying-bags. Applicant’s mark is merely an [imitation] or appropriation of a style of bag from the Japanese culture. The design is a classic shape and style of carrying bag for personal use.” Even assuming Cult Gaia could overcome the functionality issue, it still faces the challenge that the trade dress is not protectable without sufficient proof of acquired distinctiveness.
Madden’s complaint echoes the Examining Attorney’s refusal and Cult Gaia will need to overcome the same issues in the SDNY. Will Madden succeed in arguing that this bag is not entitled to protection or will Cult Gaia’s Ark stay afloat?