Bottega Veneta International S.a.r.l.

Trademark Trial and Appeal Board

Sep 30, 2013

No. 77219184 (T.T.A.B. Sep. 30, 2013)

Hearing: Mailed:
October 4, 2011 September 30, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bottega Veneta International S.a.r.l.
________

Serial No. 77219184
_______

Louis S. Ederer and John Maltbie of Arnold & Porter LLP for
Bottega Veneta International S.a.r.l.

Steven M. Perez, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Seeherman, Grendel and Wellington, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Bottega Veneta International S.a.r.l. has appealed
from the final refusal of the examining attorney to
register the design shown below, for the following goods:
Wallets, purses, handbags, shoulder bags, clutch
bags, tote bags, business card cases, credit card
cases, key cases, cosmetic cases sold empty,
briefcases, attaché cases, valises, suitcases and
duffle bags, all made in whole, or in substantial
part, of leather (Class 18) and

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77219184
2
shoes (Class 25).1

The current description of the mark is:
The mark consists of a configuration of slim,
uniformly-sized strips of leather, ranging from 8
to 12 millimeters in width, interlaced to form a
repeating plain or basket weave pattern placed at
a 45-degree angle over all or substantially all
of the goods.2

Color is not claimed as a feature of the mark, and
registration is sought pursuant to Section 2(f) of the
Trademark Act, 15 U.S.C. § 1052(f).
Registration has been refused under Trademark Act
Section 2(e)(5), 15 U.S.C. § 1052(e(5), on the ground that

1 Application Serial No. 77219184, filed June 29, 2007, pursuant
to Section 44(e) of the Trademark Act, based on an Italian
registration.
2 After oral argument, the application was remanded to the
examining attorney because the then-description of the mark (“The
mark consists of the configuration of interlaced woven strips of
leather forming a repeating weave pattern used over all or
substantially all of the goods”) appeared to be more expansive
than the mark that applicant wishes to register. On
September 10, 2012, the description of the mark was amended by
examiner’s amendment. Neither applicant nor the examining
attorney requested additional briefing after the amendment was
entered.

Ser No. 77219184
3
the proposed mark is functional, and pursuant to Trademark
Act Sections 1, 2 and 45, 15 U.S.C. §§ 1051, 1052 and 1145,
on the ground that the applied-for design does not function
as a trademark because it is solely ornamental.
The appeal has been fully briefed, and an oral hearing
was held.3
The examining attorney’s refusal on the ground that
the mark is functional is based on both the concepts of
utilitarian and aesthetic functionality. As the examining
attorney explained in the final Office action, mailed
November 24, 2009:

3 During the oral hearing the Board noted that both applicant’s
and the examining attorney’s briefs exceeded the 25-page limit
set by Trademark Rule 2.142(b)(2). Although the last page of
applicant’s brief was numbered “25,” applicant did not take into
account the title page of its brief in the number of pages
submitted. Because a title page is not required, and because, at
the time, it appeared that the examining attorney’s brief had
also exceeded the page limit, the Board allowed both applicant
and the examining attorney to file revised briefs complying with
the page limitation. Applicant did so on October 13, 2011. As
for the examining attorney’s brief, although the Patent and
Trademark Office’s TTABVUE database indicates that the brief is
28 pages, the Board was subsequently advised that this number of
pages resulted from a computer issue that is particular to the
transfer of documents from the Trademark Examining Operation’s
electronic processing system to the Board’s TTABVUE system.
Specifically, pages created in the Examining Operation’s word
processing application, when uploaded into the TTABVUE database,
are rendered into an image-based document and different
pagination can result. The brief as written was in compliance
with the rules. See In re Sela Products, LLC, __USPQ2d__, Serial
No. 77629624 (TTAB March 26, 2013). Accordingly, we have
accepted the examining attorney’s brief. We will refer to the
brief pages with the pagination that appears in TTABVUE.

Ser No. 77219184
4
The examiner previously addressed the proposed
configuration mark from viewpoints of both
utilitarian and aesthetic functionality. This
manner of review did not represent separate
refusals but merely alternate avenues for
assessing the registrability of the proposed mark
under Trademark Act Sec. 2(e)(5). The proposed
mark in fact raises issues of both utilitarian
and aesthetic nature. On balance, however, the
central question posed is one of aesthetic
functionality.

At TTABVUE page 3 of his brief, the examining attorney
explains that, although the initial Office action addressed
potential utilitarian advantages in strength offered by the
weave configuration, “subsequent review exposed a more
significant competitive advantage in the aesthetic strength
of the weave as a versatile, enduring and widely-used
fashion motif.” Id. Further, the examining attorney has
explained that “a functionality analysis limited to the
traditional ‘Morton-Norwich factors’ is inadequate in this
instance because such an inquiry is designed to expose
utilitarian advantages.” Brief, TTABVUE p. 5.4 In fact,
the traditional “utilitarian functionality” analysis was
apparently so inadequate that the examining attorney did
not even discuss the Morton-Norwich factors in his brief,
noting that “the final refusal of registration under Sec.

4 The factors set forth in In re Morton-Norwich Products, Inc.,
671 F.2d 1332, 213 USPQ 9 (CCPA 1982), have been followed by the
Board and our primary reviewing court, the Court of Appeals for
the Federal Circuit, in determining the issue of utilitarian
functionality.
Ser No. 77219184
5
2(e)(5) is made under a rubric of aesthetic functionality
focusing on the potential for significant non-reputation-
related disadvantage to competitors.” Id. Although at
oral argument the examining attorney stated that he had not
withdrawn the “utilitarian” refusal, given his
acknowledgement that this analysis would not be applicable,
we see no reason to engage in a traditional utilitarian
functionality analysis. We merely note, in passing, that
applicant’s responses regarding the Morton-Norwich factors,
and in particular, evidence submitted by applicant that its
weave design does not add strength to the product, and does
not result from a less expensive method of manufacture,
apparently satisfied the examining attorney’s objection
that the mark confers a utilitarian advantage.5
We therefore turn to the refusal that applicant’s mark
is aesthetically functional. The doctrine of aesthetic

5 For example, the declaration of Stefano Brazzale, applicant’s
Technical Director, submitted with applicant’s response filed
January 13, 2009, states that “any weaving technique, when
applied to leather, does not add strength to the products,” but
“results in the products being more delicate than those made with
a single piece or portion of leather, because each thin strip of
leather used to create the weave may tear or ruin more easily
than the single piece of leather.” Elisabetta Scaglia, the lead
auditor and leather goods consultant at the National Union of
Leather Industry in Milan, Italy, also provided a declaration
that was submitted on January 13, 2009. She stated that she
tested various pieces of leather, including whole leather and a
leather sample from applicant, to determine their strength and
resistance capabilities, and found that applicant’s product made
of woven leather is not as durable as one made from whole
leather.
Ser No. 77219184
6
functionality has had many incarnations, and there has been
significant criticism of some decisions that were based on
the general concept of aesthetic functionality. However,
the examining attorney has specifically rejected “a
discredited theory which wrongly denies trademark
protection to matter merely because it is visually
appealing, popular or commercial[ly] successful.” Brief,
TTABVUE p. 6. Instead, he has approached aesthetic
functionality under the rubric of competitive advantage, as
discussed in TrafFix Devices Inc. v. Marketing Displays
Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001).
The Board has recently discussed at some length the
law concerning aesthetic functionality in In re Florists’
Transworld Delivery, Inc., 106 USPQ2d 1784 (TTAB 2013), so
we need not repeat that analysis here. Suffice it to say
that a mark will be deemed aesthetically functional, and
therefore prohibited from registration by Section 2(e)(5)
of the Trademark Act, if the exclusive appropriation of
that feature would put competitors at a significant non-
reputation related disadvantage. Therefore, we must
consider whether registering the instant mark would have a
significant effect on competition, i.e., whether there is a
competitive need for others to use the particular weave
design that is the subject of this application.
Ser No. 77219184
7
As a preliminary point, we set forth some excerpts
from the entry for “plain weave” in Wikipedia, submitted by
the examining attorney with the September 3, 2007 Office
action:
In plain weave the warp and weft are aligned so
that they form a simple criss-cross pattern.
Each weft thread crosses the warp threads by
going over one, then under the next, and so on.
The next weft thread goes under the warp threads
that its neighbor went over, and vice versa.
Plain weave is also known as “tabby weave” or
“taffeta weave.”
***
A balanced plain weave can be identified by its
checkerboard-like appearance. It is also known
as one-up-one-down weave or over and under
pattern.
Some examples of fabric with plain weave are
chiffon, organza, and taffeta.6

In order to show a competitive need for the applied-
for weave design, the examining attorney has made of record
over 1500 pages of evidence, consisting primarily of
advertisements from third-party websites depicting items
having weave designs. The bulk of this evidence relates to
the use of weave designs on handbags and shoes. We
therefore concentrate our analysis on whether there is a
competitive need for the applied-for weave design for such

6 Applicant has asserted that “plain weave” is a concept that is
applicable to fabric, not leather. Nonetheless, applicant
accepts that “plain weave” describes the manner in which the
leather strips are used to form its weave design. We further
note that the recently amended description of the mark states
that the leather strips form a “plain or basket weave pattern.”

Ser No. 77219184
8
goods. If the examining attorney shows a competitive need
for the use of the proposed mark for handbags, that would
be sufficient for us to affirm the refusal of registration
on the basis of functionality with respect to the
application in Class 18; that is, the examining attorney is
not required to show competitive need for the use of the
proposed mark for each of the items listed in the
identification for that class. Cf. Tuxedo Monopoly, Inc.
v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981) (likelihood of confusion must be found if
there is likely to be confusion with respect to any item
that comes within the identification of goods in the
application); In re Analog Devices Inc., 6 USPQ2d 1808,
1810 (TTAB 1988), aff'd without pub. op., 871 F.2d 1097, 10
USPQ2d 1879 (Fed. Cir. 1989) (if the mark is descriptive of
any of the goods or services for which registration is
sought, it is proper to refuse registration as to the
entire class); In re White Jasmine LLC, 106 USPQ2d 1385,
1391 (TTAB 2013) (“The issue on appeal is whether the mark
is deceptive as applied to any of the goods in the
application.”). Shoes, of course, are the only goods that
are identified in the application in Class 25, so if the
examining attorney shows a competitive need for the weave
Ser No. 77219184
9
design for shoes, the refusal of the application in that
class must be affirmed.
Although the examining attorney submitted an
inordinate amount of evidence, much of it is not persuasive
because the pictured handbags and shoes display weave
patterns in general, rather than the weave design described
in the application, i.e., the strips are wider or the
design is otherwise different from the “slim, uniformly-
sized strips of leather, ranging from 8 to 12 millimeters
in width, interlaced to form a repeating plain or basket
weave pattern placed at a 45-degree angle over all or
substantially all of the goods.”7
Thus, items which have a “horizontal” weave, or are
not made of leather or materials that simulate leather, or
have strips that are much wider than 8 to 12 millimeters,
or have a weave pattern on only a portion of the product,
or have a weave that is not a plain weave, are not
persuasive evidence that third parties have a competitive
need to use the particular weave design that applicant
seeks to register. Applicant is not seeking exclusive
rights to all weave designs for the identified leather
goods. As applicant has stated, “other designs could
Ser No. 77219184
10
appear in different sizes, at different angles, and in
different orientations.” Response filed October 6, 2009,
p. 10 (TSDR p. 11).8
Similarly, some of the arguments made by the examining
attorney apply to the competitive need for a weave design
in general, but not for the specific weave design for which
registration is sought. For example, the examining
attorney has argued that woven leather is “particularly
suited for some fashion purposes, such as evoking a lighter
or more relaxed mood associated with Spring and Summer
wardrobes.” Brief, TTABVUE p. 9. However, if applicant
were to obtain a registration for its particular mark, this
would not deprive competitors from using a woven leather
design for their goods. They would be deprived only of
the right to an identical or nearly identical design
comprising the elements listed in the description of
applicant’s mark, namely, a repeating plain or basket weave
pattern, created from uniformly-sized strips of leather
ranging from 8 to 12 millimeters in width, and placed at a
45-degree angle over all or substantially all of the item.

7 At the time the examining attorney submitted this evidence,
the description of the mark was different from the current
description. See footnote 2.
8 TSDR is the Office’s Trademark Status and Document Retrieval
database.
Ser No. 77219184
11
Thus, we are not persuaded by the examining attorney’s
contention that allowing applicant to register the mark as
described in the application would deny competitors’ use of
both “the depicted configuration as well as confusingly
similar weaves which share only certain characteristics,
e.g., the same weave made from non-leather strips or not
set at an angle.” Brief, TTABVUE p. 8. We disagree with
the examining attorney’s contention that if a registration
issues to applicant it would have an impact on third
parties’ use of such materials as “ribbon, straw, reed,
grass, wood, paper, bark, plastics or other strip
materials.” Id.
Applicant has stated unequivocally that “it is not
claiming exclusive rights in every possible formation of a
leather weave design…. Rather, it seeks to register a mark
consisting of leather strips of specific dimensions and
placed in a specific orientation.” Brief, p. 10. It has
submitted examples of handbags and shoes having weave
designs that it considers alternative designs that are
available to competitors. Response filed March 4, 2008,
Exhibit 9, TSDR pp. 537-568. These examples include
products made from strips of a different size from those in
applicant’s design, and with weaves not set at an angle.
Ser No. 77219184
12
As to the examining attorney’s concern that
registration of applicant’s mark would have an
anticompetitive effect on manufacturers working with non-
leather materials, such as grasses, reeds, or wood strips,
applicant is seeking to register as a mark a design made of
woven leather. Accordingly, a registration would not have
a negative effect on the use of woven designs made from
these non-leather materials. For the same reason, we are
not persuaded by the examining attorney’s arguments that
third parties would be deterred from using any plain weave
design “given the possibility of inadvertent infringement
on three-dimensional goods, or the likelihood that
applicant’s views on coexistence would fray upon
registration.” Brief, TTABVUE p. 17.
Many of the examining attorney’s other concerns are
obviated by the fact that applicant is seeking to register
a particular leather design. For example, the examining
attorney’s contention that use of a plain weave produces “a
more flat, smooth, tight and fabric like surface ‘conducive
to printing and other finishes,’”9 brief, TTABVUE p. 10, is
based on statements applicable to fabric, not leather.
Similarly, the examining attorney’s point that “[i]f the

9 www.fibre2fashion.com, November 24, 2009 Office action, TSDR
p. 436.
Ser No. 77219184
13
weave has no added design or finish, ‘it has no right and
wrong side, making either side usable,’”10 id., also is
based on statements about fabric. The examining attorney
also claims that applicant’s diagonal placement of its
plain weave in effect uses the bias of the weave. The
examining attorney has submitted evidence about how bias-
cut garments can be draped more gracefully. Much of this
evidence refers to the cutting and draping of fabric for
garments, not leather for the goods at issue herein. See
generally, Exhibit G to November 24, 2009 Office action,
TSDR pp. 503-583. In these 80 pages of exhibits, there is
only one leather item that shows a weave that is placed at
a 45-degree angle, an “Elliott Lucca Trieste Tote,” TSDR
pp. 521-526, which is advertised as having “bias-cut, woven
genuine leather walls.” It is not clear to us how “bias”
and “bias cut,” as described in the reference works and
articles, would be applicable to this handbag. Thus, this
evidence does not demonstrate a competitive need for the
particular design that applicant seeks to register.
A final argument made by the examining attorney is
that third parties that use a woven leather design for
other fashion accessories such as belts would be hindered
in expanding their product lines to shoes and handbags,

10 www.cwu/edu, taken from “Chapt 1-Fabric.”
Ser No. 77219184
14
citing Deere & Co. v. Farmhand Inc., 560 F.Supp. 85, 217
USPQ 252 (S.D. IA 1982), aff’d 721 F.2d 253 (8th Cir. 1983).
Deere & Co. was an infringement action brought by the John
Deere company, alleging, inter alia, that a particular
shade of green was its trademark for farm machinery and
equipment, and that the defendant’s use of that color for
its front-end loaders was an infringement. The Court
applied the doctrine of aesthetic functionality because of
its finding that “farmers prefer to match their loaders to
their tractor.” 217 USPQ at 262.
We are not persuaded that the current situation is
analogous. Among other reasons, the evidence that
consumers prefer to match their accessories consists of
only one article, called “Matching Shoes and Belts,” on the
Life123 website, www.life123.com, stating that “poorly
matched shoes and belts are one of those universal calling
cards of bad taste.” The article suggests that the
material be matched, e.g., black patent leather shoes with
a black patent leather belt. There is nothing in the
article that indicates consumers buy their shoes to match
their belts, as opposed, perhaps, to the other way around.
Nor is it clear from this article that leather shoes with a
weave design must be worn with a leather belt that has a
weave design. Even assuming all of these things, a
Ser No. 77219184
15
registration to applicant for the proposed mark would not
preclude a manufacturer of leather belts with a weave
design from using a weave design on shoes, as long as the
weave design did not cover all or substantially all of the
shoe, and/or the weave was not placed at an angle, and/or
the strips were not the size identified in the description
of the proposed mark.
The examining attorney has also submitted evidence
that third parties (as well as applicant) use a single
design on handbags and accessories. Frankly, it is not
clear to us that these examples are merely of designs being
used on both types of products, as opposed to being
trademarks that cover large sections of the bags and
accessories; therefore, this evidence has little probative
value.11 See, e.g., November 24, 2009 Office Action, TSDR
pp. 754-755 (Burberry handbags and belt with same plaid
fabric); TSDR pp. 757-767 (Coach handbags, belts, jewelry
and accessories, with “C” design covering the entirety of
the items).12

11 Thus, with respect to the examining attorney’s refusal,
discussed infra, that applicant’s weave design would be viewed
merely as ornamentation, this evidence may actually support
applicant’s position, in showing that it is not uncommon for
companies to use trademarks to cover the entirety of handbags and
accessories, as a result of which consumers would be inclined to
view as a trademark the weave design covering applicant’s goods.
12 The examining attorney also contends that a registration to
applicant “would deprive consumers who may be able to afford only
Ser No. 77219184
16
The foregoing discussion of the mark in issue,
evidence of record and arguments concerns aesthetic
features that, because of a quality of the feature itself,
could make the feature aesthetically functional. See, for
example, Brunswick Corp. v. British Seagull Ltd., 35 F.3d
1527, 32 USPQ2d 1120 (Fed. Cir. 1994), in which the black
color of outboard marine engines made the engine appear
smaller and provides color compatibility; In re Florists’
Transworld Delivery Inc., supra, in which the color black
was a significant color to be used for mourning, or
Halloween, or to denote elegance. This manner of showing
that a product design is aesthetically functional involves
establishing that the aesthetic feature possesses
significance or conveys a benefit, such that it can
provide a competitive advantage to an entity acquiring
exclusive rights to use this feature.
However, it is also proper to look at third-party uses
to ascertain whether there is a competitive need for a
particular design. Certainly evidence of a great number of
third parties that use a certain feature can show that the
feature is necessary for companies to be able to compete

one of applicant’s luxury goods the ability to coordinate a
matching bag or shoes from a different manufacturer.” Brief,
TTABVUE p. 18. The fact that a purchaser cannot, in effect,
purchase a knock-off of a trademarked product does not fall under
the concept of competitive need.
Ser No. 77219184
17
effectively, i.e., the exclusive appropriation of that
feature would put competitors at a significant non-
reputation related disadvantage. At the same time, we must
also be aware that competitive usage may not always be
evidence of competitive need, but of a desire to copy or
take advantage of a feature that has become associated with
a single company. With that in mind, we now turn to the
evidence of third-party items showing weave designs that
appear to be the same or confusingly similar to the mark
described in applicant’s application.
First, we give no probative value to the evidence
showing products that are perceived as copies of
applicant’s goods. This evidence does not show a
legitimate competitive need for the particular weave design
that applicant uses; if anything, these uses show that the
weave design is recognized as applicant’s trademark. See,
for example, the following description on the Carrying
Contraption website, www.carryingcontraption, written in
July 2007, for a “Barneys Woven Leather Tote”:
Here’s another Bottega-Veneta-esque tote bag made
of suede and python (handles).
…
This is another example of a non-BV woven leather
tote bag. My prognostication is that within five
years, we won’t be able to tell an intrecciato13

13 “Intracciato” is translated as “intertwined, interlaced,
twisted, (inter)woven, braided, plaited.” The Sansoni
Ser No. 77219184
18
BV from a non-BV woven leather bag. And that’s
not a bad thing at all.

July 11, 2008 Office action, TSDR pp. 38-40.
A similar description, also on the Carrying Contraption
website, dated July 5, 2007, for the “Falor Tote Bag,”
states:
Don’t let the woven leather fool you—this is not
a Bottega Veneta bag. And I guarantee you more
and more of these bags will be imitated in the
future. Too bad for BV (and label whores), woven
leather can’t be trademarked and will be
accessible to the masses. ::gasp::

To the ladies and gentlemen who buy the
intrecciato Bottega Veneta bags only for
“quality”--get over yourselves, everyone knows
you’re spending the dough because the intrecciato
is “exclusive” at the moment.14

July 11, 2008 Office action, TSDR pp. 42-43. A pair of
combat boots is described: “Get the Bottega Venetta [sic]
Style, without paying the Bottega Venneta [sic] price.”
April 4, 2009 Office action, TSDR p. 298.
Hundreds of pages of the evidence submitted by the
examining attorney consist of advertisements for “vintage”

Dictionaries, English-Italian, Italian-English, 3d ed. (2002).
The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
14 Applicant submitted evidence, through the second declaration
of Vanni Volpi, applicant’s intellectual property counsel, that
it brought an action against Falor in Florence, Italy, as a
result of which Falor entered into a settlement agreement with
applicant in which it acknowledged applicant’s trademark rights
Ser No. 77219184
19
bags and shoes. Most of these are from individual sellers
on sites such as eBay. Although many of these submissions
show photographs of leather bags or shoes that appear to
have the same or confusingly similar designs as applicant’s
proposed mark, this evidence is not particularly probative
of competitors’ current need to use such a design. The
fact that an individual has found an old handbag or pair of
shoes in her closet and wants to sell it,15 or that a
handbag manufacturer used that woven leather design many
years ago, is not evidence that competitors today have a
need to use the particular weave design.16 Further, as
discussed infra, we cannot discount the possibility that
the third-party manufacturers deliberately copied
applicant’s weave design because of its connection with
applicant.

in the weave design, and agreed to cease all manufacture and sale
of these products.
15 “I bought these boots from Nordstrom years ago for $700.000
wore them very lightly for a short period of time and they have
remained in my closet since.” Posting on ebay.com, April 4, 2009
Office action, TSDR p. 217.
16 We realize that the examining attorney has submitted evidence
of “vintage” items in part to counteract applicant’s claim that
it is the originator of the particular leather plain weave design
and third parties using this design were merely copying
applicant. Even if, arguendo, the evidence clearly demonstrated
that applicant was not the first user of this plain weave design,
it would not necessarily follow either that competitors have a
need to use this design, or that third parties that used the same
design subsequent to applicant’s adoption of it were not copying
applicant’s weave design.
Ser No. 77219184
20
After carefully reviewing all of the evidence showing
weave designs on handbags, there are a very small number
that can be considered to have the very same features as
those described in applicant’s mark.17 Although several
others are similar, they have some distinguishing features,
such that they do not totally match the description of
applicant’s weave design.
We are not persuaded that third-party use of the same
or a confusingly similar design is so extensive that a
non-reputation related competitive need to use the applied-
for design on handbags has been established. Certainly the
third-party examples do not show that the particular weave
design applicant seeks to register is such a generally
accepted decorative feature that we can conclude that there
is a legitimate competitive need for others to use it. In
this case the examining attorney, as noted earlier,
submitted an inordinately large amount of evidence. It is
clear that he did an extremely thorough job in finding such
evidence including single handbags sold by individuals, and
even earrings and watchbands having leather weave designs.

17 We note that in its response filed October 6, 2009, applicant
identified a number of bags that it considered to be
infringements. This occurred prior to the amendment to the
description of its mark on September 10, 2012; in any event, it
is up to us to determine which competitors’ designs are the same
in terms of assessing competitive need for the design that
applicant seeks to register.
Ser No. 77219184
21
Accordingly, in this case, where there is such overwhelming
evidence of a multitude of weave designs, the very limited
number of weave designs that approximate applicant’s weave
design, at the very least, raises a question as to whether
there is a competitive need for the design that applicant
seeks to register.
Moreover, although evidence of competitive usage can
be evidence of competitive need, we must also acknowledge
that third parties may adopt an aesthetic feature because
it has been made popular by a particular company, and
consumers may wish to have items displaying this feature
because of its association with the company that
popularized it. For example, if the design applicant seeks
to register identifies applicant as the source of the
goods, and consumers are buying competitors’ bags having
this design to have a bag that looks like it originates
with applicant, i.e., because it has the look of
applicant’s bags, this would not make the design
aesthetically functional, because it is the association
with applicant that consumers want to obtain. Thus, it is
possible that some of the third parties, whether current
competitors or the makers of the “vintage” goods, adopted
the weave design for their products not because the design
has an inherent aesthetic value, but because of the
Ser No. 77219184
22
popularity or cachet that applicant created in the design
by its own efforts. As Jason Jobson stated in his
declaration, “Given the level of copying that is always
going to occur in the fashion industry, Bottega Veneta
should not be penalized just because other manufacturers
have decided to copy its Bottega Weave Design.”18
Accordingly, the very limited number of third-party
uses of the particular weave design, where there is such
overwhelming evidence of weave designs in general, and the
possibility that some third parties adopted the weave
design because of its association with applicant, creates
some doubt as to whether there is a competitive need for
the design that applicant seeks to register.
We also conclude, with regard to the application in
Class 25 for shoes, that the proposed mark is not
functional. For the same reasons discussed in connection
with the Class 18 handbags, i.e., the limited evidence of
use of this design despite the extensive amount of evidence
submitted by the examining attorney, and the possibility
that some third parties adopted the weave design because of
its association with applicant, raise a doubt as to whether

18 Mr. Jobson identifies himself as a self-employed luxury brand
consultant who has worked in the fashion industry for more than
fifteen years (and who has never worked for applicant).
Ser No. 77219184
23
competitors have a legitimate need to use a design with the
particular characteristics of applicant’s proposed mark.
In cases involving other grounds for refusal, there is
a policy that doubt should be resolved in favor of
publication of the mark. See In re Benthin Management
GmbH, 37 USPQ2d 1332 (TTAB 1995) (surname); In re Hines, 32
USPQ2d 1376 (TTAB 1994) (disparaging); In re Over Our Heads
Inc., 16 USPQ2d 1653 (TTAB 1990) (scandalous); and In re
Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972)
(descriptive). In a case involving the issue of aesthetic
functionality, where the question to be resolved is
competitive need, we think that adopting this principle is
particularly appropriate, since publishing the mark will
allow competitors to come forward to assert and prove that
they do have a competitive need to use the proposed mark
if, indeed, they have such a need. Accordingly, because we
have doubts about whether the proposed mark is functional
for handbags and shoes (and because the evidence with
respect to the goods in Class 18 relates virtually entirely
to handbags), we reverse the refusal on the ground of
functionality.
However, before we leave the question of aesthetic
functionality, we must make a final comment. Our finding
that the design is not aesthetically functional is based on
Ser No. 77219184
24
a very narrow reading of the proposed mark, and the scope
of protection to which it is entitled. The examining
attorney has raised the concern that, armed with a
registration, applicant would attempt to prevent third
parties from using various forms of a plain weave design.
It does not appear that applicant has any intention of
doing so; applicant specifically says that it “appreciates
that its rights in the Bottega Weave Design may be
relatively narrow.” Reply brief, p. 6. However, to
specifically address the examining attorney’s concerns, we
reiterate that we are finding only that the specific design
for which applicant seeks registration is not aesthetically
functional. We are not finding that the protection to be
accorded this mark would extend to allow applicant to
prevent the use, for example, of similar designs with
different size leather strips, or to goods having a plain
weave set at an angle but also having noticeable plain
leather portions. If applicant were claiming rights to
such other designs, the analysis would change, and designs
having these other features would have to be considered in
assessing competitive need. In effect, the reason that we
have found no competitive need for applicant’s proposed
mark is because we are considering as probative only
competitive uses of the essentially identical design.
Ser No. 77219184
25
Ornamentation and Acquired Distinctiveness

This brings us to the refusal based on the ground that
applicant’s proposed mark is ornamentation and does not
function as a mark, and that applicant has not demonstrated
that the design has acquired distinctiveness.
Applicant seeks registration pursuant to Section 2(f)
of the Act, claiming that its mark has acquired
distinctiveness. By doing so, applicant has admitted that
its proposed mark is not inherently distinctive. Yamaha
International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d
1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) (where an
applicant seeks a registration based on acquired
distinctiveness under Section 2(f), the statute accepts a
lack of inherent distinctiveness as an established fact).
Therefore, we consider the examining attorney’s arguments
and evidence that the proposed mark is purely ornamental in
connection with applicant’s evidence of acquired
distinctiveness, as part of our determination of whether
applicant’s evidence shows that what would initially be
viewed as merely ornamental has come to be recognized by
the consuming public as a source indicator for applicant’s
goods.19 In making this determination, we must consider the

19 The examining attorney makes the statement that “[a]
determination that the proposed mark is … purely ornamental
Ser No. 77219184
26
evidence of acquired distinctiveness in relation to the
degree of inherent distinctiveness of the design sought to
be registered, or more accurately, the lack thereof. In re
K-T Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787, 1789
(Fed. Cir. 1994) (the showing that may be deemed adequate
will of course depend on the particular facts; the
requisite weight of evidence will vary with the degree of
descriptiveness of the mark); In re Lorillard Licensing
Co., 99 USPQ2d 1312, 1316 (TTAB 2011) (the greater the
descriptiveness or non-distinctiveness of the proposed
mark, the greater the burden is on an applicant to
demonstrate acquired distinctiveness).
The evidence submitted by the examining attorney in
connection with the functionality refusal shows that woven
leather designs, and particularly designs in plain weave,
are often used for handbags and shoes. As a result,
customers are not likely to view such designs as a source-
identifier unless there has been significant promotion that
the design is a trademark. In other words, applicant has a

constitutes an absolute bar to registration on the Principal
Register, regardless of any evidence of acquired
distinctiveness.” Brief, TTABVUE p. 23. However, that is not
correct. If a design has acquired distinctiveness, then it would
not be purely ornamental, and it would be registrable pursuant to
Section 2(f).

Ser No. 77219184
27
heavy burden to demonstrate that its applied-for weave
design would be recognized as a trademark.
Applicant has submitted a significant amount of
evidence in support of its claim of acquired
distinctiveness.
According to the declaration of Vanni Volpi, submitted
with its March 4, 2008 response, applicant’s weave design
was first used on handbags in 1975. ¶ 4. As of 2008,
applicant’s goods were sold at 19 of its own Bottega Veneta
boutiques and at such high-end retail stores as Neiman
Marcus, Saks Fifth Avenue, and Bergdorf Goodman. ¶ 6. From
2001 through 2007 sales of applicant’s products in the
United States exceeded $275 million, and the weave design
appeared on over 80% of the goods. ¶ 7. The bulk of the
sales amounts were for handbags. Advertising expenditures
in the United States during this time period totaled $18
million. ¶ 8. (A later declaration by Mr. Volpi, submitted
with the October 6, 2009 response, states that between 2005
and 2009 applicant spent over $22.9 million advertising
products bearing its weave design in U.S. magazines.) For
over 35 years applicant’s catalogs and ads have featured
products with the weave design as its trademark. ¶8.20 In

20 In reviewing the catalogs, we note that not all of the items
featured therein show the mark sought to be registered. For
Ser No. 77219184
28
1996 the introduction to its U.S. catalog referred to its
“signature woven handbags,” and all of the handbags in that
catalog bore the design that is the applied-for mark.
Advertisements and “editorials” featuring items with the
applied-for weave design have appeared in such magazines as
Vogue, Women’s Wear Daily, O, Elle, New York, Hollywood
Life, Time and Marie Claire. Many of these advertisements
and editorials specifically reference the intrecciato weave
design. See, for example, response filed January 13, 2009,
TSDR pp. 207, 214, 221, 226, 229.
Applicant has also submitted numerous newspaper and
magazine articles in which its “signature” weave design is
noted, e.g.:21
You don’t have to look at the label to know that
this soft and slouchy handbag is from Bottega
Veneta. Their “Intrecciato” woven leather speaks
for itself.
Distinction, March 2002, TSDR p. 290.

Bottega Veneta takes pride in not having a logo,
but the brand flaunts its signature woven leather
as a hallmark in its first New England Store.
WWD, November 20, 2007, TSDR p. 291.

The venerable Italian label, known for its
signature woven-leather goods, proves a chain
wallet can and should look grown up.

example, some of the shoes and handbags have the weave design,
but only on a small portion of the item. See response filed
March 4, 2008, showing, in the 1993 catalog, a shoe with the
weave design only on the vamp. TSDR p. 69; another page features
a shoe with the weave design only on the toe cap and a handbag
with the sides and upper area in plain leather. TSDR p. 71.
21 Submitted with March 4, 2008 response.
Ser No. 77219184
29
GQ, December 2005, TSDR p. 293.

Luxury retailer emphasizes shoes, handbags in
classic woven leather (subtitle)
It all comes back to the line’s signature look,
sans logos or labels, which are handbags and
shoes featuring intrecciato woven leather.
Palm Beach Daily News, November 26, 2001, TSDR p.
310.

…In the 1970s, its [applicant’s] intricately
woven rustic-looking designs were sufficiently
identifiable to inspire the company’s slogan,
“When your own initials are enough.”
New York Times, March 27, 2008, submitted with
January 13, 2009 response, TSDR p. 173.

The métier of Bottega was working soft glove
leather by hand and weaving it into a distinctive
crosshatched pattern, called intrecciato. The
intrecciato bag soon became an international
status symbol, and Maier, in his revamp of the
company, has made the pattern the leitmotif of
the whole house, applying it to everything from
his signature Cabat bag … to silver picture
frames, floor lamps, desks, china, and crystal
tumblers.
Vanity Fair, September 2008, submitted with
January 13, 2009 response, TSDR p. 177.

Applicant has also submitted numerous declarations
from individuals involved in the fashion industry,
testifying as to the recognition of its weave design.
Jason Jobson, identified in footnote 17, considers
applicant’s weave design as “iconic” for handbags, “such
that the customer and the trade can identify the source of
the design simply by looking at it.” Exhibit E to January
13, 2009 response, ¶ 4.
Ser No. 77219184
30
Jonathan Joselove, the senior vice president, general
merchandise manager for Neiman Marcus Stores, states that
applicant is recognized “for the distinctiveness of the
woven leather design” and “I would say that consumers
encountering Bottega’s Weave Design immediately recognize
that the handbags come from Bottega Veneta solely from the
weave design alone, and without reference to any other
indicia of source, such as labels or hangtags.” Exhibit F
to January 13, 2009 response, ¶ 7.
Judie Conn, a senior buyer at Gorsuch Ltd., who has
been in the business of retailing fashion items for over 30
years, states:
In my experience, consumers encountering products
such as handbags and shoes containing Bottega’s
Weave Design immediately recognize that the
products come from Bottega Veneta, from the weave
without reference to any other indication of
source, such as labels or hangtags. Without
signage customers see the bags and say, “Oh, you
have Bottega Veneta.”

Exhibit G to January 13, 2009 response, ¶ 8.22

Perhaps most persuasive in showing recognition of
applicant’s weave design are the descriptions by the public
either referencing the weave design or describing third-

22 We have quoted statements from three of the declarations, but
point out that declarations from many additional people in the
fashion industry are of record.
Ser No. 77219184
31
party products as looking like applicant’s weave. See the
following examples:
A consumer comment about an Atmos woven leather
coin purse, states: Atmos has offered up their
Bottega Veneta-esque Brick Coin Purse….
www.Elifestyle.com. July 11, 2008 Office action,
TSDR p. 47.

Review on Bag Snob, www.bagsnob.com, by “Bag Snob
Tina” about a Marc Jacobs Elsa Woven Leather Bag:
I’m a little bit Chanel, I’m a little bit Bottega
… It’s almost as if “someone” took a little bit
of “something” when they hallucinated this bag…
But woven leather with garish gold chains…. For
that amount I can buy a REAL Chanel or a REAL
Bottega and not some third rate knock off.
Response filed January 13, 2009, TSDR p. 69.

“Article” on http://jezebel.com, March 27, 2008,
states: You know Bottega. They make those
basketweave-y leather bags. … The idea is that
Bottega’s bags are getting popular because they
are more “understated” than flashy Louis Vuitton
bags, and people are sick of logos. You know,
the basketweave, it is not quite like a logo. No
one knows where it’s from. Until they do. And
then they recognize it everywhere they see it.
So it’s like a logo, but subtler.
Response filed January 13, 2009, TSDR p. 192.

Comments on The Purse Blog about a Miu Miu Woven
Leather Hobo:
“I know, I know, Bottega Veneta is the woven
leather genius….” TSDR p. 151;
“I don’t like it. It looks like a BV bag but BV
is much better.” TSDR p. 153;
“I think that it is unoriginal in the fact that
the woven leather is ‘BV inspired’ to say the
least.” Id.
November 24, 2009 Office action

The evidence we have detailed herein, as well as the
other evidence of record, amply demonstrates that
Ser No. 77219184
32
applicant’s weave design is recognized by consumers as a
trademark for applicant’s goods.23 Accordingly, after
reviewing all of the evidence of record, and considering
applicant’s and the examining attorney’s arguments, we find
that applicant has met its burden of proving that the
applied-for design has acquired distinctiveness as a
trademark for the identified goods.
Decision: We reverse the refusals on the grounds that
the mark is functional and is merely ornamentation, and
find that applicant has demonstrated that the design has
acquired distinctiveness as a trademark. We also repeat
our previous statement that our finding that the design is
not aesthetically functional is based on a very narrow
reading of the proposed mark, and the scope of protection
to which it is entitled.

23 The examining attorney has not addressed the question of
acquired distinctiveness specifically with respect to the non-
handbag items identified in Class 18, and therefore we have not
discussed such evidence in detail. However, we point out that
there is evidence in the record of advertisements and articles
with respect to applicant’s use of this design on such items, as
well as on shoes. Further, the acquired distinctiveness of the
mark in connection with handbags is so strong, and the other
Class 18 items are so closely related to handbags, that the
acquired distinctiveness of the mark would transfer to these
goods in any case. See TMEP § 1212.09(a) and cases cited
therein.