Patagonia Sues Gap for Trademark Infringement on Fleece Pullover Design
I recently learned that Patagonia sued Gap for trademark infringement late last year. The case is pending in the United States District Court for the Northern District of California. Patagonia’s suit includes several causes of action, including, infringement of its logos and product trade dress. There are several interesting issues in the case so far. I am going to split these issues into to posts: (1) Patagonia’s claims and what Patagonia will need to show; and (2) Gap’s defenses and counterclaim.
To oversimplify, Patagonia alleges that Gap uses a logo that is confusingly similar to Patagonia’s logo. Similarly, Patagonia alleges that Gap’s fleeces infringe on the design of Patagonia’s Snap-T, which consists of Patagonia’s trade dress.
Recall, trademark infringement generally requires ownership of a protectable trademark and a likelihood of confusion between the senior user’s mark and the junior user’s mark. With respect to the logos, Patagonia owns federal registrations for several logos. See, e.g., U.S. Registration No. 1775623 for the mark .
One of the benefits of owning a federal trademark registration is a presumption that the mark is distinctive (i.e., the mark has secondary meaning). Stated differently, customers immediately recognize the mark as a source identifier (i.e., inherently distinctive marks) or have grown to associate the mark with the source through long use and promotion (i.e., acquired secondary meaning). Unless Gap can overcome Patagonia’s presumption of distinctiveness, Patagonia’s primary task in demonstrating infringement will be establishing a likelihood of confusion between the Parties’ logos. As discussed in other posts, likelihood of confusion involves several factors (e.g., similarity of marks, similarity of goods/services, strength of the marks, evidence of actual confusion, etc.). Among other things, Patagonia would benefit from putting on evidence of confused customers (e.g., misdirected emails, call logs, etc.) and/or survey evidence showing that prospective customers would confuse the marks in the marketplace.
As for the trade dress claim, I am not aware of a registration for Patagonia’s Snap-T trade dress. Therefore, Patagonia has additional requirements to satisfy the requirement of showing a protectable trademark. In addition to showing that the mark has secondary meaning, trade dress cannot be functional. Further and with respect to secondary meaning, product design is never inherently distinctive. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 120 S. Ct. 1339 (2000). As a result, Patagonia will also need to show that the Snap-T trade dress has acquired secondary meaning. Second Am. Comp. at ¶ 7.
Patagonia defined the Snap-T trade dress in its complaint as “a snap placket and matching pocket flap, rendered in contrasting color from the fleece and in different fabrication. Piping is used on the collar, cuffs and waist and is often rendered in a contrasting color. The rectangular P-6 logo is placed above the pocket flap.” Patagonia is required to define its trade dress because the definition sets the stage for the distinctiveness and functionality requirements. With respect to distinctiveness, Patagonia must show that the consuming public associates the combination of these features with Patagonia. Several factors will be considered. In the Ninth Circuit (the federal court of appeals for California and several West Coast states), Courts consider the following factors when evaluating secondary meaning:
(1) Consumer Perception. Whether the people who purchase the product that bears the claimed trademark associate the trademark with the plaintiff;
(2) Advertisement. To what degree and in what manner the plaintiff may have advertised under the claimed trademark;
(3) Demonstrated Utility. Whether the plaintiff successfully used this trademark to increase the sales of its product;
(4) Extent of Use. The length of time and manner in which the plaintiff used the claimed trademark;
(5) Exclusivity. Whether the plaintiff’s use of the claimed trademark was exclusive;
(6) Copying. Whether the defendant intentionally copied the plaintiff’s trademark;
(7) Actual Confusion. Whether the defendant’s use of the plaintiff’s trademark has led to actual confusion among a significant number of consumers.
Analyzing the functionality requirement is easier said than done. For example, it is industry specific (e.g., a neon construction vest is probably functional whereas a neon colored, casual t-shirt might not be), which likely requires assessing the ath-leisure industry in this instance. Courts also consider manufacturing costs and whether alternatives exist. In the Patagonia v. Gap case, a court might find that the snaps are functional for securing the flap pocket and tightening the collar. Similarly, the piping in the collar, cuffs, and waist could be considered functional for tightening the fleece to the wearer’s body, as well. Gap might argue that using piping, plackets, and flaps of the same colors is functional due to reduced manufacturing costs associated with fewer colors.
As you can see, Patagonia has several showings in store for it. The case will not be easy. As for my part, this post is not comprehensive. For example, the dilution cause of action raises additional issues. And of course, there are countless issues that will arise in the lawsuit that are not addressed in the parties’ pleadings. Stay tuned for updates. In the meantime, if you are concerned that a competitor is selling a product or using a logo that is creates confusion among your customers, I encourage you to consult with a trademark attorney.
