The Board sustained an opposition to registration of the product configuration mark shown below, for footwear in class 25, on the ground of ornamentality and lack of acquired distinctiveness. In September 2013, the Board reversed a refusal to register the applied-for mark, finding the design not to be aesthetically functional under Section 2(e)(5), and not to be mere ornamentation in view of its acquired distinctiveness. [TTABlogged here]. The Board there emphasized that its ruling on non-functionality was “based on a very narrow reading of the proposed mark, and the scope of the protection to which it is entitled.” The application was then published for opposition, and this proceeding ensued. Marc Fisher, LLC v. Bottega Veneta, Opposition No. 91214253 (June 4, 2019) [not precedential) (Opinion by Judge Cindy B. Greenbaum).

The opposed application states that the mark “consists of a configuration of slim, uniformly-sized strips of leather, ranging from 8 to 12 millimeters in width, interlaced to form a repeating plain or basket weave pattern placed at a 45-degree angle over all or substantially all of the goods.” Because the applied-for mark is a product configuration, it may be registered only upon a showing of acquired distinctiveness. Thus applicant sought registration under Section 2(f).

The Board acknowledged the Board’s finding in 2013 that “applicant has a heavy burden to demonstrate that its applied-for weave design would be recognized as a trademark” because the record demonstrated frequent use of woven leather designs, “and particularly designs in plain weave,” for handbags and shoes. The Board also observed that applicant has the “ultimate burden of persuasion” as to acquired distinctiveness, which it must meet by a preponderance of the evidence.

Based on Mr. Fisher’s testimony and Opposer’s evidence, discussed below, concerning the history of weave designs for shoes, Mr. Fisher’s personal experience with using weave designs for shoes that he designed and manufactured in the 1980s and 1990s, and the third-party uses to which he testified, including the 21 third-party shoes Opposer made of record, we find that Applicant’s burden is heavy, indeed.

Although the prosecution file of the opposed application is automatically of record in this opposition, the Board did not consider the declarations in the file to be testimony because they were not executed during the assigned testimony period. See Robinson v. Hot Grabba Leaf, LLC. The exhibits attached to the declarations were at least ten years old and therefore have little or no probative value regarding recent customer perception. They also suffered from a hearsay problem.

Opposer’s founder, Marc Fisher, “consistently and repeatedly testified that the proposed mark is a woven leather basket weave that commonly was used on footwear in the 1980s and 1990s and continues to be used on footwear ….” Opposer submitted 21 third-party shoes having a weave design that “falls within the parameters of the applied-for mark.”

Applicant contended that some of these shoes did not fall squarely within the description of applicant’s mark: for example, the strips might be 6 or 7 millimeters instead of 8. Mr. Fisher testified that a one millimeter difference would not be noticed: “A millimeter is like a thread.”

In other words, because ordinary footwear consumers do not typically bring a ruler with them when they shop for shoes, and there is no evidence that they are able to recognize the width of leather strips within millimeters, they will rely on a general impression and will likely not be able to distinguish whether a particular shoe has strips of leather that are a few millimeters within range of Applicant’s claimed width of 8-12 millimeters.

Similarly, consumers would not be able to tell whether the leather strips are precisely at a 45 degree angle. And the phrase “all or substantially all” is “open to debate as to its limiting effect.” The Board observed that these third-party shoes do not have to be identical to the applied-for mark in order to have probative value on the issue of acquired distinctiveness.

The Board recognized that it was reaching a different conclusion than that reached in 2013, but it pointed out that the record evidence is different here. “Simply put, we are not bound by the 2013 decision.”

Applicant claimed that the third-party shoes are knock-offs or infringements of its design. The Board disagreed based on the evidence, which defied applicant’s claim that its use of the design is, or has ever been, substantially exclusive. Moreover, applicant has taken no action to police its mark, and the existence of these third-party shoes make it less likely that consumers associate the design with applicant.

Applicant pointed to its use of the design since 1975, claiming it to be its “signature” design. The Board observed, however, that “long and continuous use alone is insufficient to show secondary meaning where the use is not substantially exclusive.” Likewise, applicant’s sales and advertising figures may demonstrate the popularity of the products but without more, they do not prove that the design serves as a source indicator.

Notably, applicant provided no evidence of “look for” advertising, which undermined its Section 2(f) claim. Nor did it provide consumer testimony, relying instead on the testimony of one of its managers as to the popularity of its products. The Board, however, found her testimony about consumer perception to be mere hearsay.

Finally, the Board noted applicant’s ownership of a registration for the same mark in class 18 (which registration issued after the 2013 decision). Although Rule 2.41(a)(1) allows the USPTO to accept an applicant’s ownership of an active prior registration for the same mark as evidence of acquired distinctiveness, provided that the goods are “sufficiently similar,” the Rule states that additional evidence may be required “in appropriate cases.” Applicant provided no evidence that handbags and footwear are “sufficiently similar” such that the prior registration “would even be a factor for us to consider.”

Based on the record as a whole, the Board concluded that applicant had failed to overcome opposer’s prima facie case of lack of acquired distinctiveness, and it therefore sustained the opposition. The Board found it unnecessary to reach opposer’s claim if aesthetic functionality.

Read comments and post your comment here.

TTABlog comment: Ouch! Quite a change in fortune for this applicant. Is its Class 18 registration for handbags now vulnerable? Note that it reached its fifth anniversary on May 13, 2019.

Text Copyright John L. Welch 2019.