Trade Dress: Dior's Iconic Saddle Bag Application Before USPTO

*** The writing does not, and is not intended to, constitute legal advice by any means***
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DIOR PRE-FALL 2020 CAMPAIGN
FEATURING JENNIFER LAWRENCE HOLDING ITS  SADDLE BAG

A few days ago, I floated around the notion of trade dress as a branch of trademark, and I promised to discuss it in more detail in a future blogpost. Here it is! Dior filed a trademark registration to USPTO (United States Patent and Trademark Office) for its iconic saddle bag. (USPTO is an agency under the U.S. Chamber of Commerce and issues patents and trademark registrations upon review). It is undisputed that Dior's saddle bag, reinvented under Maria Grazia Chiuri, has been a global hit. The saddle bag was first designed and introduced by Marc Bohan who took the creative helm at Dior from the 60s to the 80s. Dior now introduces a new line of its saddle bag in various colors and patterns every season. Today, I will explain what trade dress is as a legal concept and how the agency would review Dior's trade dress application.

As I said in an earlier post, the Lanham Act is the statutory basis for trademark protection in the United States. (See the earlier post to learn the basics of trademark.) Trade dress primarily affords protection to the design and shape of the materials in which a product is packaged. See 17 U.S.C. § 1127. The idea is that trademark protection should be granted when product packaging can serve as an effective source identifier. However, trade dress protection does not stop short of there. It also provides protection to the design and shape of the product itself if it meets certain requirements. This is what Dior is seeking: the protection of the design and shape of Dior's emblematic saddle bag.

Although trade dress can be protected without the USPTO registration, which is federal, it is always a good idea to own a valid registration certificate because it comes with many benefits. (See the earlier post to learn what the benefits are.) Since the Supreme Court's landmark decision in Qualitex, almost anything is registrable under trademark. (Proviso: If is purely functional, you should instead go after patent). See Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159, 162 (1995). (In Qualitex, the Supreme Court ruled that color is a registrable trademark subject matter.) In Walmart, the Supreme Court went a step further. It held that product design can receive trademark protection upon a showing of secondary meaning, a legal term for acquired distinctiveness. Therefore, Dior has to establish that its saddle bag can serve as a source identifier as effective as its trademarked logo by demonstrating that the saddle bag acquired secondary meaning in the market. The Supreme Court in Walmart articulated the relevant legal standard, laying out that secondary meaning is acquired when "in the minds of the public, the primary significance of a [saddle bag] is to identify the source of the product rather than the product itself". See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 206 (2000). Dior would have included in the trade dress application the evidence in support of the proposition that when people see the saddle bag, they unmistkably associate it with Dior. In essence, the association between the saddle bag and Dior has to be inseparable in the mind of the viewer.

The remaining question is why Dior is attempting to register its saddle bag after all those years. The saddle bag has been in the market for more than two decades. From a corporate lawyer perspective, it is always a good business strategy to have a strong arsenal of intellectual property. Plus, although this is my conjecture, with the worldwide success of the saddle bag and its progeny, myriad knock-offs have surfaced in the market and hurt Dior in ways that nudged it to seek the federal protection. Dior is under LVMH, which is well-known for its strong IP protection approach. In the event of a lawsuit, the USPTO registration certificate serves as a prima facie evidence of valid trademark ownership. All the burden shifts to a counterfeiter-defendant to rebut that her or she did not infringe. Once the registration has the USPTO approval, Dior is likely to go after counterfeiters and bring them to court.