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Thursday, 2 October 2014

Is Trade Dress in the Bag?

I learned about this trade dress case from this tweet by fellow New York attorney Mark H. Jaffe, who also kindly provided the link to the case. Thank you Mark!

Plaintiff Nicole Lee is a handbag and accessories company based in Los Angeles. It owns several copyright registrations for the artwork and features of its handbags, and also owns a trade mark for its logo and for some features of its handbags, such as metal emblems and nameplates. It does not, however, hold a registered trade mark for its trade dress.

Plaintiff filed suit on September 29 against several handbag companies in the Central District of California, claiming trade dress infringement and unfair competition. The complaint alleges that defendants manufactured and sold copies of plaintiff’s handbags, sometimes “with confusing and misleading references to #NicoleLee or Brand: Nicole Lee.” The case is Nicole, Inc., v.Cielo USA et al., cv14-7551.

Indeed, the complaint alleges that one of the defendants, Cudgi, sells infringing bags on eBay, labeled as “Brentano,” along with genuine Nicole Lee merchandise. Cudgi has a Pinterest page, and the complaint alleges that is has “pinned” there images of infringing products, tagging them #NicoleLee #Handbag.

This Handbag May be a (Trade) Dress

Plaintiff claims it owns trade dress rights in its designs for “the size, shape, color or color combinations product design, texture, and selection and arrangements of materials and accessories.” A trade dress is the overall look of a product, and plaintiff alleges that its trade dress consists, but is not limited to, using an “artistic depiction of a stylish woman with a doll-like face” and “two or more of seven additional designs, such as a foreign cityscape or a leopard print background, a particular rectangular nameplate or the face of a lion. “

The complaint claims that “[t]he appearance, nature and mood of [the trade dress] are of such an unusual design that a customer would immediately rely on them to ascertain the source of the product” and that it has acquired secondary meaning.

Indeed, a trade dress may be protected under Section 43(a) of the Trademark Act which forbids affixing a false designation of origin on any product or service. However, such trade dress must have acquired secondary meaning.  Therefore, consumers must associate the trade dress with a particular source because, in their minds, the primary significance of the product feature is to identify the source of the product rather than the product itself.

As a reminder, fashion and accessories designs cannot beprotected in the U.S., as the Copyright Act does not protect useful articles. However, elements of the design which can be “conceptually separable” can be copyrighted. In our case, plaintiff holds several copyrights for locks, lining, or a particular lion design used as a print. However, a bag, as a whole, cannot be copyrighted.

This is why plaintiff is claiming trade dress infringement. However, under section 43(a) (3) of the Lanham Act, plaintiff has the burden to prove that the trade dress is not functional.  

Therefore, defendants may assert as a defense that the trade dress is functional, and they may also, alternatively, argue that it has not acquired secondary meaning. 

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