TTAB Decision Reminds Brand Owners to Watch Their Words

Fashion industry attorney Danielle Garno was quoted in a Law360 article about a recent precedential decision from the Trademark Trial and Appeal Board (TTAB) refusing to register a trade dress on a Los Angeles fashion brand's "Ark" handbag, and how it serves as a cautionary tale for attorneys and clients that public statements could negatively affect them down the road.

In late March, the TTAB decided to redesignate as precedential a January 2022 ruling that rejected an application from a company owned by Jasmin Larian, the founder of Cult Gaia, to register the trade dress on the bamboo Ark bag, finding its design was generic and alternatively lacked in acquired distinctiveness. Larian's own statements that the Ark was a reproduction of a Japanese handbag served as additional evidence to support the finding.

Ms. Garno said the TTAB's decision sets a "high evidentiary bar" for obtaining trade dress protection but added that it also shows where there was a strong case for acquired distinctiveness and where the company fell short. She said ultimately, the ruling provides a list of steps for brands to follow when trying to register for a trademark.

"I believe that educating and instructing brands to be mindful of these factors, and particularly the TTAB's analysis in this case…is essential, so that they position themselves as best they can to be successful in obtaining a trademark in their design," Ms. Garno said.

READ: TTAB Decision Reminds Brand Owners to Watch Their Words (subscription required)