Ttab Decisions and Developments

• Publication year: 2022
• Author: Jane Shay Wald

TTAB DECISIONS AND DEVELOPMENTS

Jane Shay Wald

Irell & Manella LLP

When A Handbag's All The Rage Call It Ark - It's Still A Cage And Generic (Widespread Use) Refusing ® Was No Abuse

This January 2022 case, denying trademark (trade dress) protection to an ubiquitous "bamboo cage" style handbag, was recently re-designated as precedential—a good decision for practitioners as the way a trade dress may be deemed generic is set forth in considerable detail in this decision. The Board upheld the Examining Attorney's refusal to register Applicant's trade dress in its handbag as generic. Alternatively, the Board found that even if the configuration were not generic, it could not be protected as it acquired no distinctiveness. It seems the Board is handing down more 50-plus page opinions in recent years, and this is one of them. This is the applicant's drawing of the trademark sought to be registered.

The bag (or cage) is known as the Ark bag. Applicant has sold it since 2013, and it rose to popularity with consumers of upscale accessories. It was referred to in the media as the "It" bag. Celebrities were photographed with it. Nonetheless, the Board found the bag shape sought to be registered generic and therefore unregistrable. "In the context of product design, genericness may be found where the design is so common in the industry that it cannot be said to define a particular source." The Board pointed to evidence of third-party sales of nearly identical bags, including some pre-dating Applicant's use. Some may recall such bags sold in the 1950s into the 1960s as "creel" style "purses." Evidence of record confirmed these sales, as vintage shops still carry the old "creel" or "birdcage" purses.

Applicant realized it didn't help itself by its media pronouncements, its own advertising, and its product informational card touting that its design was a reproduction of a common Japanese "picnic bag" design. The Applicant therefore introduced testimony of an expert on Japanese artifacts, who testified that while he knew nothing of fashion or handbags, the design of Applicant's bag didn't look very Japanese to him. He

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therefore testified on behalf of the Applicant that Applicant's own characterization of the trade dress (handbag) as Japanese was wrong. The Board made clear that whether the bag copied prior Japanese bags was not an outcome-determinative issue. "The characterization of the bag as 'Japanese' provides context, but is not central to the refusal, nor is it an attempt at a cultural-appropriation type refusal. It is merely an attempt by the Examining Attorney to refer to the bag by its common commercial name consistent with the name generally used by others, as shown by the extensive evidence of record." Applicant also introduced the declaration of a handbag expert who testified that the Ark bag "'does not constitute a category or common style of handbag.'" She testified that there are "categories of handbags that are recognized as classic shapes and styles, such as tote bags, envelope bags, clutch bags, duffle bags, etc." The Applicant argues that because the Arc bag doesn't fit into one of those generic shapes or styles, it can't be generic. However, the Board observed that her research did not include MoMA, "where evidence was already of record regarding the common nature of bags embodying the mark." The Board dismissed this witness's evidence as failing to consider "some of the most probative evidence...." The Board found there was no obligation to further define the genus, handbags, by "category" (e.g., clutch bags) or national origin. In re Jasmin Larian, LLC 2022 USPQ 2d 290 (TTAB 2022).

The Board Was Clear Didn't Monkey Around Reversing, Because The Examiner Found The Mark Was Two Words But The Board Saw Just One No Disclaimer Of "Kid" Was Required, Or Sound

This is another re-designated-as-precedential case. The Board agreed with Applicant that no disclaimer of "KID" was needed in a pair of design mark applications for numerous goods in numerous classes, mostly geared toward kids.

The mark in English, heavily laden with graphics, is MONKIE (and joined with a graphic) KID. The additional application was in Chinese. The Chinese characters that transliterate to WU KONG XIAO XIA were found by the Board to be equivalent to the English wording Monkie Kid. The Examining Attorney had perceived a two-word mark, MONKIE KID, with the graphic between them having the visual effect of separating the words. The PTO can't require a disclaimer of a piece of a unitary mark; Applicant argued that the mark was unitary, and projected a specific cartoon-ish character, Monkiekid. The Board agreed that the design elements festooning the words MONKIE and KID in each case visually bonded the two terms into one—as a unitary mark—and did not separate them. Because the Board recognized that the logos were unitary marks, projecting "MONKIEKID," no disclaimer was proper. Therefore, the refusals to register without disclaimer were reversed. In re Lego Juris A/S, Ser. Nos. 88698784 and 88698804 May 9, 2022.

Opposer Dropped The Ball Its Neglect Was Not Excusable So It Lost Its Case And All Like An Opera Or A Musical

The Board re-designated this case, originally decided March 22, 2022, as precedential.

Opposer asserted its mark LUX, and a logo version of LUX, used and registered for soap for general washing and body cleansing wash against Applicant's mark LUX ENHANCER ("Enhancer" disclaimed). The opposed application claimed use of LUX ENHANCER for various hair products...