Stella McCartney Ltd. persuaded a panel of the Trademark Trial and Appeal Board that the company can register “Fur-Free Fur” as a trademark for its clothing, handbags and other accessories.
The board’s finding on March 29 reverses a decision by a trademark examiner at the U.S. Patent and Trademark Office, who had rejected the company’s application by deeming the alliterative label merely descriptive, and not distinct enough to warrant trademarking.
The panel disagreed, saying that the way the brand uses the word “fur” in the label means both “animal fur” and “imitation fur,” which puts the consumer to work in deducing its full meaning. In other words, it’s just interesting enough a label on faux-fur that makes it “suggestive,” which could merit trademark status, rather than something more straightforward and “descriptive,” which may not.
“The two different meanings of the term ‘fur’ within applicant’s single mark creates a logical paradox,” Administrative Trademark Judge Thomas Shaw wrote in the board’s opinion. “By way of analogy, applicant’s mark is the ‘Schrödinger’s cat’ of trademarks: It suggests that the goods are both fur-free and made of fur at the same time.”
A representative for Stella McCartney did not immediately comment.
The decision is significant because it involves a fairly unusual instance in which a company fought to try to trademark such a label without backing down, and where the Trademark Trial and Appeal Board took their side rather than backing the trademark examiner.
But it’s not the end of the road. The brand will still need to get “Fur Free Fur” registered, and, after that, successfully enforce it in a marketplace where “fur-free” products abound. And disputes to uphold the trademark may end up in court.
“In a court of law, a judge considering a dispute over the mark could conceivably invalidate the registration, or find that it didn’t have enough distinctiveness to be registered,” said David Perry, co-chair of Blank Rome LLP’s intellectual property and technology practice group.
Nonetheless, the development is timely for brands marketing “cruelty-free” products, during a time when fur apparel is increasingly being policed. California’s lawmakers are contemplating a proposed ban on the sale and production of new fur products, while the New York City Council is considering a similar measure to ban the sale of fur clothing. Los Angeles voted last month to ban new fur products in the city.
McCartney promotes her company on its web site “as a vegetarian brand.” In recent years, several high-end designers and retailers including Chanel, Gucci, Armani Group and Burberry have taken steps to avoid fur.