Trade dress is a sub-category of trademarks traditionally reserved for product packaging. However, it can also include product design itself if the design elements claimed are distinctive and allow the consumer to recognize a single source as the producer or seller of the goods. Well known product design cases include high heels with contrasting red soles[1], iconic electric guitar shapes[2], and the green color of night-time cold medicines.[3]

It is a high bar to clear, as asserting registrable trade dress is stating that consumers will recognize your product as coming from you—and only you—without even seeing your brand name. With this in mind, it should come as little shock that relatively few registrations are granted. CULT GAIA’s Ark bag was no exception.

On March 29, 2022, the Trademark Trial and Appeal Board (TTAB) re-designated its January 19, 2022 decision In Re Jasmin Larian, LLC as precedential, forcing fashion designers and retailers to grapple with its implications for trade dress applications for product design. This case stemmed from the US Patent and Trademark Office’s (USPTO’s) refusal to register as trade dress the “Ark” bag design (pictured beneath as depicted in the TTAB opinion) sold under Jasmin Larian’s Los Angeles-based CULT GAIA brand.

The TTAB used a combination of Jasmin Larian’s own statements, online comments, foreign English-language fashion publications, sales of similar items by competitors that predate Jasmin Larian’s sales, and museum exhibits to hold that the bag is not only generic (a sufficient reason to reject the registration), but also that the design does not rise to the level of having “acquired distinctiveness.”

The primary takeaways for fashion brands looking to build an evidentiary record of acquired distinctiveness sufficient to register product packaging or design as trade dress are twofold. First, be careful what you say in the press, in interviews, and in documents or tags that accompany your goods. To prove your product’s design rises to the level of protectable trade dress, you have to show it is not generic. Jasmin Larian made multiple statements revealing that this bag design was essentially a recreation of a traditional Japanese picnic bag, which the TTAB used against her to help prove the design was popular long before her product debuted.

Second, when advertising on social media, be careful about posting hashtags or other identifying branding without a “look for” statement. The TTAB found that, despite Jasmin Larian’s large advertising expenditures, the advertising campaigns merely advertised the brand and its products, rather than leading customers to identify the bag’s features with the company. The TTAB stated, “[i]t is well established that without any advertising directing consumers to the identifiable features of Applicant’s bag, typically consumers are unlikely to notice that feature of trade dress design, let alone perceive it as being exclusively associated with a single source.”

Advertising for a product, the design of which will be claimed as trade dress, should direct the consumer to “look for” whatever traits will be claimed as trade dress. This can be as explicit as including copy loosely following the template “Look for the [insert distinctive product feature claimed as trade dress]! Then you know it’s a genuine [insert product or brand name]!” Or, as the Second Circuit found successful in Louboutin v YSL,[4] it can be done through focused advertising efforts to “create[] a symbol…uniquely associated with the [] brand.”[5] Louboutin took this to heart, releasing an ad in 2013 showing the famed shoemaker in his shop meticulously painting shoe soles red, cutting to a model putting on a shoe, then showing where the model walked via red paint footprints she left behind.[6] Conversely, the TTAB held that instead of highlighting a specific feature of the Ark bag, Jasmin Larian simply advertised the bag itself.

There are three main takeaways for litigators. First, despite the territoriality of trademark law, the TTAB will consider evidence from foreign websites “to which US consumers likely have been exposed” as probative of the awareness of US consumers. Second, raw sales figures, without context, carry little evidentiary weight. Jasmin Larian provided sales in units and in revenue, but did not provide comparative or contextual figures, such as market share, leading the TTAB to state that “the absence of evidence of competitive contextual information may limit the probative value that we might otherwise accord advertising and sales numbers in the acquired distinctiveness inquiry.” Last, while intentional copying of a product design by competitors can indicate that a design has acquired secondary meaning/distinctiveness, if that copying is also of the word marks or logos, it may actually work against a finding of distinctiveness. The TTAB’s reasoning is that to do so implies that the companies copying the mark do not believe consumers would “perceive the trade dress by itself as a source indicator or believe that consumers would rely on the trade dress alone as an indicator of the source of the goods.” Put differently, if the one doing the copying believes the customer won’t fall for the fake without a label, the product design likely does not rise to the level of trade dress. [1] Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206 (2d Cir. 2012).