USPTO Issues the "Final" Office Action: Dior Hits A Stumbling Block In Its Journey to Trademark the Saddle Bag Design

*** The writing does not, and is not intended to, constitute legal advice by any means***

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Source: The official website of Dior

Revived by Maria Grazia Chiuri from the house archive, the saddle bag has become a stunning global hit, dominating both the pages of fashion magazines and the streets of cities worldwide. It thus comes as no surprise that Dior has been striving to register the design with the United States Patent and Trademark Office ("USPTO"). The registration certificate comes with tremendous benefits. In the closely-watched Booking.com case, the late Justice Ginsburg emphatically pointed out that "the owner of a mark on the principal register enjoys "valuable benefits", including a presumption that the mark is valid." United States Patent Trademark office v. Booking.com, 140 S. Ct. 2298, 2302 (2020). However, Dior's now almost year-long journey to federally trademark the design hits a stumbling block as the USPTO issued the Final Office Action in which it determined that the design is not registrable on the principal register.

So what exactly Dior is attempting to federally register? The application describes the design as a "three-dimensional product design of a bag with a curved and sloping base, and a single flap with curved contours covering the opening of the bag". Last year, I reported that Dior had filed a saddle bag design application to the USPTO. The initial application was rejected by the examining attorney on the ground that the saddle bag design is constitutive of "a non-distinctive product design or non-distinctive features of a product design". The examining attorney explained the basis of the refusal by stating that the elements of the saddle bag design can never be inherently distinctive. In order to overcome the inherently distinctive bar, the design must show that it has acquired secondary meaning - that is, consumers in the marketplace uniquely associate the design with Dior. In the Final Office Action, the same examining attorney indicated that Dior did not furnish the evidence necessary to establish that the design has achieved the requisite level of secondary meaning. Dior's mere conclusory assertion that the saddle bag is globally recognized does not automatically warrant a finding of secondary meaning. 

Dior now has about six months to provide that much sought-after evidence. What kinds of evidence can Dior rely on to effectively demonstrate secondary meaning? The USPTO's Trademark Manual of Examining Procedure lists a following set of evidence:

• (1)  Prior Registrations: A claim of ownership of one or more active prior registrations on the Principal Register of the same mark for goods or services that are sufficiently similar to those identified in the pending application.
• (2)  Five Years’ Use: A verified statement that the mark has become distinctive of the applicant’s goods or services by reason of the applicant's substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made.
• (3)  Other Evidence: Other appropriate evidence of acquired distinctiveness.

However, there is another obstacle Dior has to surmount. Dior filed the application in connection with Class 18, which covers leather goods. Since the application is an intent-to-use application, Dior also has to show that the goodwill Dior has successfully established through the saddle bag is transferable to other leather items for which it intends to use the design in the near future. Understandably, Dior expended a vast amount of resources in advertising and distributing the saddle bag around the world. If Dior opts to supplement the application with more solid evidence, we will soon hear from the USPTO the real final decision.