By Lígia Carvalho Abreu (2015)

 

Homage to Bottega Veneta I. Illustration made by Catarina Pinto and Lígia Carvalho Abreu. Source of Inspiration: Électrique Intrecciato Silk Stretch Knot Clutch Bag designed by Bottega Veneta and Look 12 of the 2014/2015 Fall RTW Collection designed by Thomas Maier for Bottega Veneta.

Logos have (always) been used as signs of distinctiveness in brands since the beginning of the mass manufacturing age in the 19th century. However, in the case of Bottega Veneta, brand distinctiveness has no relation with logos but instead with singular design aspects such as the Intrecciato and the Knot.

Those brand signatures are the result of a perception on luxury, based on the expertise and quality of artisanal craftsmanship, passed down from generation to generation, as well as on the uniqueness of shapes and patterns which fully justify the slogan used by the company: When your own initials are enough!  

The Intrecciato is a hand-weaving leather technique and pattern consisting 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”[i]. The Intrecciato is used in all major Bottega Veneta products, for instance, in wallets, purses, handbags, shoulder bags, clutch bags or shoes. 

The Knot is a striped knot shape design with caps at each end which is attached to a clasp in clutch bags or on the cap of fragrance bottles with the same name.  

Over the years the Intrecciato and the Knot have acquired public recognition as distinctive signatures of the brand. Consumers easily associate the Intrecciato and the Knot to a Bottega Veneta product.

Based on this argument, in 2007, the company decided to register the hand-weaving leather design (Intrecciato) in the United States. In this sense, it applied for the United States trademark registration on the US Patent and Trademark Office Principal Register (USPTO) based on the § 2 f) of the Lanham (Trademark) Act (15 U.S.C):

Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially, exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993[ii].

 

Traditionally, Trademark Law protects words or logos which designate the source of goods and services. However, it is also possible to identify the source of goods by the visual appearance of a product. As a consequence, the design, shape or a particular arrangement of materials from certain products may be protected by intellectual property rights. They may be considered as a form of Trade Dress and be registered as a Trademark.

However, one of the legal challenges concerning the evolution of the concept of protectable Trade Dress is to identify when trade dress recognition serves the same legitimate purpose as the Trademark of identifying the source of a product in order to prevent misleading practices and consumers’ confusion provoked by imitations of these products or, instead of this, when design protection is claimed to achieve a competitive advantage to the detriment of other competitors’ rights.

In December 2009, the company was informed about the decision for the rejection of a requested registration. Based on the Lanham (Trademark) Act (Sections 1, 2 (e) and §§ 1051, 1052 and 1145), the examining attorney stated that there was no reason to deprive Bottega Veneta’s competitors from using a similar design given that the Intrecciato had been employed for merely aesthetic reasons, thus being “solely ornamental” and “merely functional”[iii]. The exclusive appropriation of the hand-weaving leather “would put competitors at a significant non reputation related disadvantage”[iv] which is prohibited by the Trademark Act.

I assumed that this decision did not take into account Bottega Veneta’s fundamental rights for protecting, against design piracy, the distinctiveness of the Intrecciato and the Knot. They are signs of the creator Bottega Veneta who is its first commercial user. They are not applied to goods in an identical or similar way to other existing trademarks. They are symbols of quality and source indicators that can lead consumers to distinguish between goods and making informed purchasing decisions. Hence, I agree with Jason Jobson:

Given the level of copying that is always going to occur in the fashion industry, Bottega Veneta should not be penalized just because other manufactures have decided to copy its Bottega Veneta Weave Design[v].  

Homage to Bottega Veneta II. Illustration made by Catarina Pinto and Lígia Carvalho Abreu. Source of Inspiration:  Pale Burnt Red Safari Canvas Nappa Bag designed by Bottega Veneta and Look 40 of the 2014/2015 Fall RTW Collection designed by Thomas Maier for Bottega Veneta.

 

In disagreement with this decision, in June 2010, Bottega Veneta decided to appeal to the Trademark Trial and Appeal Board (TTAB). The company reaffirmed the distinctiveness of the weaving leather and in addition stated that:

Louis Vuitton had obtained trademark-based monopolies over similar aesthetic features (a design of squares with checkered patterns of light and dark with the unusual contrast of weft and wrap), and Bottega Veneta needed its own trade-dress monopoly in order to compete.[vi]

 

In 2013 the TTAB was favorable to the recognition of the Trade Dress rights of the company. 

The TTAB considered Bottega Veneta to:

[Have] submitted a significant amount of evidence in support of its claim of acquired distinctiveness. According to the declaration of Vanni Volpi, submitted with the 4th March 2008 response, the applicant’s weave design was first used on handbags in 1975. As of 2008, the applicant’s goods were sold at 19 of its own Bottega Veneta boutiques and at such high-end retail stores as Neiman Marcus, Saks Fifth Avenue, and Bergdorf Goodman. From 2001 through to 2007, sales from the applicant’s products in the United States exceeded $275 million, and the weave design appeared on over 80% of the goods. The bulk of the sales amounts were for handbags. Advertising expenditures in the United States during this time period totalled $18 million. (A later declaration by Mr. Volpi, submitted with the October 6, 2009 response, states that between 2005 and 2009 the applicant spent over $22.9 million advertising products bearing its weave design in U.S. magazines.) For over 35 years the applicant’s catalogues and ads have featured products including weave design as its trademark[vii].

 

By consulting known publications such as the New York Times, Vanity Fair, Vogue, Elle or GQ, as well as declarations from retail stores and consumers, the TTAB stated that the Intrecciato had acquired sufficient distinctiveness to be protected as a trademark because it is recognised by the public as Bottega Veneta's signature[viii]:   

 

The evidence we have detailed herein, as well as the other evidence of record, amply demonstrates that the applicant’s weave design is recognized by consumers as a trademark for the applicant’s goods. Accordingly, after reviewing all of the evidence of record, and considering the applicant and the examining attorney’s arguments, we find that the applicant has met its burden of proving that the applied-for design has acquired distinctiveness as a trademark for the identified goods.[ix]

 

Contrary to the examining attorney, the TTAB did not believe that with the required registration Bottega Veneta wanted to create a closed monopoly related to the use of weave designs. Consequently it did not want “to prevent third parties from using various forms of a plain weave design”[x] and was not claiming “exclusive rights on every possible formation of the leather weave design”. [xi] Rather, it only wanted “to register a mark consisting of leather strips of specific dimensions and placed in a specific orientation”.[xii] Thus, the scope of Bottega Veneta’s IPR is limited to the exact pattern of the hand-weaving leather pattern. The company can prevent competitors from using an:

Identical or nearly identical design comprising of the elements listed in the description of applicant’s mark, namely, a repeating plain or basket weave pattern, created from uniformly-sized strips of leather ranging from 8 to 12 millimeters in width, and placed at a 45-degree angle over all or substantially all of the item[xiii]. (…) If the applicant were claiming rights to such other designs, the analysis would change, and designs having these other features would have to be considered in assessing competitive need. In effect, the reason that we have found no competitive need for applicant’s proposed mark is because we are considering as probative only competitive uses of the essentially identical design.[xiv]

 

By virtue of the social function of IP, the Intrecciato is only protected by IPR if it represents an achievement of innovation and economic or cultural development, without completely restraining freedom of creation and private initiative from the competitors and blocking new creations built on previous ones. In this case the required registration does not infringe the social function of IP. As it is noticed by Anthony V. Lupo and Amy E. Salomon in their article about this case, Bottega Veneta:   

Cannot stop competitors from displaying a weave pattern with much thicker strips of leather, strips of different material, or a weave pattern displayed at a different angle/orientation.[xv]

Homage to Bottega Veneta III. Illustration made by Catarina Pinto and Lígia Carvalho Abreu. Source of Inspiration: Platinum Metal Grid Knot Clutch Bag designed by Bottega Veneta and the Look 9 of the 2014/2015 Fall RTW Collection designed by Thomas Maier for Bottega Veneta.

 

In 2014, Bottega Veneta also submitted to USPTO a trademark registration for its Knot[xvi]. This product design was only eligible for registration on the supplemental register. This kind of intellectual property register is allowed for marks that did not provide sufficient proof of distinctiveness, according to Section 2 f) of Lanham Act, for registration on the principal register. In other words, the supplemental register “is reserved for non-distinctive marks that are capable of acquiring distinctiveness but have not yet done so[xvii]”. Non-distinctive and non-functional trade dress are some of the marks which are eligible for registration on the supplemental register. [xviii]  Under this type of register the Bottega Veneta trademark rights related to the Knot are limited.     

 

A registration on the Supplemental Register grants its owner the right to use the registered ® symbol when the mark is used with the products or services listed in the registration. A registration on the Supplemental Register will also block later-filed applications for confusingly similar marks for related goods. [xix]  

 

I consider that, suchlike the Intrecciato, the Knot has acquired public recognition and therefore could be eligible for registration on the principal register. For more than a decade, Bottega Veneta has invested labour and money efforts so as to bring the Knot into a status of iconic design. The huge number of Knot clutch bag sales records, statements from fashion industry experts, the press and the consumers are a confirmation of what has been achieved by Bottega Veneta.   

        

 

 


[i] United States Patent and Trademark Office, Trademark Trial and Appeal Board, In re Bottega Veneta International S.a.r.l. Serial No. 77219184, September 2013, 2-3, https://thestyleofthecase.files.wordpress.com/2014/01/bottega-veneta-reverse-decision.pdf    

[ii] The Lanham (Trademark) Act available at http://www.law.cornell.edu/uscode/text/15/1052

[iii] United States Patent and Trademark Office, Trademark Trial and Appeal Board, In re Bottega Veneta International S.a.r.l, 2-4.

[iv] Ibid., 5-6.

[v] Ibid., 22.

[vi] Charles Colman. The TTAB’s Dangerous Dismissal of ¢Doubt¢. Edited by Elise Young. In: Harvard Journal of Law & Technology. Nov. 2013. http://jolt.law.harvard.edu/digest/trademark/the-ttabs-dangerous-dismissal-of-doubt     

[vii] United States Patent and Trademark Office, Trademark Trial and Appeal Board, In re Bottega Veneta International S.a.r.l, 27.

[viii] Ibid., 25.

[ix] Ibid., 32.

[x] Ibid., 24.

[xi] Ibid., 11.

[xii] Ibid.

[xiii] Ibid., 10.

[xiv] Ibid., 24.

[xv] Anthony V. Lupo and Amy E. Salomon.Fashion House Bottega Veneta scores big win at TTAB. Lexology:2013, http://www.lexology.com/library/detail.aspx?g=2984a5f9-4a53-441c-b12c-c4c04b22d36b    

[xvi] Seung Wahn Roh. It’s Not Just a “Knot”. It’s the Bottega Veneta Knot. Intellectual Property Brief. American University. Washington College of Law: 2014,  http://www.ipbrief.net/2014/11/26/its-not-just-a-knot-its-the-bottega-veneta-knot/

[xvii] International Trademark Association. U.S. Trademark Registrations: Principal Register vs. Supplemental Register. http://www.inta.org/TrademarkBasics/FactSheets/Pages/PrincipalvsSupplementalRegister.aspx

[xviii] Ibid.

[xix] Ibid.