Is Peloton Spinning Its Wheels? Peloton Petitions to Cancel “SPINNING” Registrations
The USPTO found its hands tied when examining an application for registration of a knot for use on or in connection with "handbags, shoulder bags, ladies' handbags, clutch bags and purses." Though the USPTO initially refused registration of Italian luxury brand Bottega Veneta's knot design, it reversed its refusal last week and granted registration of the knot design on the supplemental register.Bottega Veneta describes its mark as "a configuration, namely, a three-dimensional knot with caps at each end, affixed to a clasp on the goods." The Examining Attorney initially refused registration of the mark, claiming that it was a "nondistinctive product design" or "nondistinctive feature of a product design" that was not registrable on the Principal Register without sufficient proof of acquired distinctiveness.
In response, Bottega Veneta submitted evidence related to the promotion and recognition of its knot design. This evidence consisted of a 586 page submission, which included declarations from fashion industry experts and examples of media coverage. Bottega Veneta claimed that it had more than $18 million in sales in the past ten years and had spent approximately $5 million in advertising in the same time frame. The response compared the knot design to the Chanel CC mark, the Tory Burch cross mark, and the Ferragamo bow. This was not enough to overcome the refusal, so the application was passed for publication on the supplemental register.
The Supplemental Register is reserved for nondistinctive marks that are capable of acquiring distinctiveness, but have not yet done so. Once Bottega Veneta can prove that its knot mark has acquired secondary meaning, it can file a new application for a Principal Registration of the knot mark. Contary to popular belief, a Supplemental Registration cannot be converted into a Principal Registration; instead, a new appliction must be filed.
I have to disagree with the Examining Attorney on this one. I'd say that Bottega Veneta submitted pretty sufficient evidence that the mark has acquired distinctiveness. As a self-proclaimed fashionista, I certainly recognize this knot as an indicator of source:
Bottega Veneta did "knot" stop with a single application. It has also applied to register its knot design for use on personal care products, and has filed an application for registration of the word KNOT.
For those of you unfamiliar with the Bottega Veneta "knot," here's a saucy advertisement for KNOT fragrance:
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