As Dior abandons saddlebag brand application in the United States, a look at the role of residual goodwill

Dior has put an end to its quest to obtain trademark registration in the United States for the design of its saddle bag… at least for now. On the heels of receiving an Office action in March in which the United States Patent and Trademark Office (“USPTO”) provisionally refused to register “the three-dimensional product design of a bag with a curved and slanted base, and a single flap with curved contours covering the opening of the bag ‘as a trademark, Dior’s attorney sought to abandon the request on September 9, and the USPTO approved the abandonment one day later, removing the request from the registration process.

After reintroducing the bag – first created by former Dior Creative Director John Galliano just over 20 years ago – as part of the Fall / Winter 2018 collection of Maria Grazia Chuiri, now head of the creation, Dior filed for registration for the design in March 2020, essentially claiming that the shape of the bag, itself, serves as an indication of provenance in the minds of consumers just like the name Dior, for example. example, or its “CD” logo.

The application – which was filed with an intention to use the base – was rejected from the outset by the USPTO, a trademark body examining attorney who preliminarily refused to register the Saddle Bag trademark on two separate occasions. on the grounds that the mark amounts to “a non-distinctive product design or non-distinctive features of a product design. According to a March 2021 Office action, the USPTO’s second letter of denial, counsel Examiner John Mitchell has asserted that the Dior saddle bag brand is not eligible for registration on the USPTO Master Register without Dior showing that the design of the bag has “acquired some distinctiveness.”

(At some point between the filing of the application and the issuance of the Office’s second action, Dior chose to delete its claims on ‘Classes 9 and 25 in their entirety. [from its application], and modified class 18 to restrict the identification of goods to “purses”; bags in the nature of handbags, pouches and handbags; hand bags; leather pouches ‘in class 18.’ It also changed the brand’s description from “a tote design” to the more specific “three-dimensional product design of a bag with a curved and slanted base, and a single curved flap covering the bag. opening of the bag. “)

Mitchell said that by simply asserting that “the mark applied for is distinctive and has become one of the most iconic bag designs in the world”, Dior filed an application to produce proof of acquired distinctiveness – or to in other words, proof that as a result of the intensive use and promotion of the bag design by Dior, “consumers now directly associate [the design] with Dior.

As for responding to the Office Action with proof of acquired distinctiveness, it appears that Dior is not looking to tackle this at the moment. However, this is certainly not the last that we will see from this brand. Dior currently has an application for the same mark pending before the European Union Intellectual Property Office; it also has an application for just the curved flap of the bag for use in classes 18 and 25 pending before the USPTO.

THE BROAD VIEW: As for the US registration application for the saddle bag, an interesting element is the filing by Dior on a 1 (b) basis or intention to use, which generally means that the applicant does not yet use the mark in commerce but has a good intention to do so or may use the mark in commerce but does not yet claim commercial use for any reason. It’s worth it (I think), because if Dior (still) only sells the saddle bag since the summer of 2018 after a long hiatus in sales of this specific bag, there may be some arguments to be made – and / or important points to remember for brands – on keeping Dior rights in the bag no doubt identifying the source.

To date, the notion of trademark rights remaining in place even when the original rights holder does not actually manufacture and sell new versions of a product has been widely debated in the context of cars. As Fish & Richardson lawyer Keith Barritt wrote several years ago, in “a few cases, often involving durable products like automobiles, [courts] have ruled that a brand owner retains the rights to the brand, even if no product has been sold for several years. For example, Barritt noted that “where no Ferrari DAYTONA SPYDER automobile has been manufactured for thirteen years, with no plans to resume manufacturing such cars, a United States federal court nonetheless found that the distinctive trade dress in the form of the car was not abandoned ”because: (1) Ferrari continued to provide parts and services to cars, and (2) the DAYTONA SPYDER design was viewed as strongly and positively associated with Ferrari.

As such, Barritt argued that “in some instances the existence of a strong ‘residual goodwill’ may seemingly serve as a basis for concluding that no surrender has taken place. ”

Fast forward to the end of last year and the Court of Justice of the European Union awarded Ferrari a victory in a separate – but similar – case, determining that the Italian automaker has not made new ones. models of his famous Testarossa from the 1990s, but he may still retain the trademark rights to the name. In this case, the court considered it important that Ferrari offers used vehicles, including Testarossas, for sale under official partnerships with dealers, and that it also takes care of issuing certificates of authenticity. – as well as providing parts. / services – for used Testarossa models through its Ferrari Classiche “restoration and certification service”.

Both cases were seen as helping to broaden the traditional understanding of use in commerce, which is necessary for the protection (and registration) of a trademark, and as contributing to a “relatively low threshold necessary to demonstrate “Genuine use”, ”according to Stevens & Bolton Lawyers LLP Tom Collins and Amelia Talfourd-Cook.

There are some obvious differences between cars and handbags. Cars, for example, have traditionally been on the market much longer than things like handbags for a variety of reasons, including different levels of durability and investment, and the element of trends / seasonality that comes with shopping. cheaper like bags. However, with the boom in the resale market, luxury handbags are somewhat taking on a new role in the market, one that increasingly sees them as investment-worthy assets, as well as items. potential family members that can stand the test of time – both in terms of enduring style but also condition with the rise of branded repair / restoration services.

As such, the idea of ​​residual goodwill is relevant to certain categories of handbags, and should probably further encourage brands to consider offering repair and restoration services, as well as warranties, like Chanel and others are currently doing so. It can push resilient luxury brands into the resale space as well, even if such aftermarket adoption requires formal partnerships with existing resale players. (In the last Ferrari case, partnerships with third-party dealers were sufficient “use” in the eyes of the court.)

In addition to providing businesses with benefits, such as access to entry-level luxury goods (similar to more accessible, cheaper, and often licensed products), and increased levels of control over the location and conditions under which their used products are sold, aftermarket efforts like these can also potentially help brands extend the life of their valuable brands if they choose to put certain products on the market. ice cream and start selling them again years later. This is rarely an argument that is discussed in favor of brands that venture into resale and / or repair efforts, but it is worth considering, especially as brands continue to sell. ” strongly rely on the role (that is to say the derived income) of heritage or transport. -on products, which are being reintroduced with increasing frequency lately – whether it’s Jackie from Gucci or of course Saddle from Dior.

About William G. Patrick

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