Written by Anastasia Troshkova | January 27, 2021
Shoes are made “for walking”… Duh!
Within fashion industry, quotation marks became almost synonymous with the Off-White luxury brand, which uses them as a decorative element on various products – examples include using the words “Salary Inside” and “Sculpture” on the bags and the words “For Riding” on the boots.
Last October, Off-White filed an application with the US Patent and Trademark Office (USPTO) to register the mark “For Walking” in relation to footwear.
The tricky part is that descriptive terms usually do not qualify for the trade mark protection.
In the beginning of January, the USPTO, perhaps unsurprisingly, preliminary refused the application, citing the descriptiveness of the mark as a ground.
According to the office action, “a mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.” The words “FOR WALKING” describe the purpose of the goods in questions – the footwear, and hence cannot be allowed for registration.
Just as Nancy Sinatra sang over a half century ago,
“These boots are made for walking
And that’s just what they’ll do”*
*Songwriter: Lee Hazlewood
© Universal Music Publishing Group
Whether Off-White will be able to convince the examiner to allow registration of the mark remains to be seen – they now have six months to either submit arguments in support of registration or to move the application to the Supplemental Register, which allows protection for non-distinctive marks that could acquire distinctiveness through use.
Similar rules apply in the UK – under the Trade Marks Act 1994 the trade marks “which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services” cannot be registered. It is therefore highly likely that Off-White would face similar objections if they tried to secure their mark here in the UK.
For more information on what rules a successful trade mark application needs to comply with, or if you would like to discuss any other aspect of brand protection, please drop us an email or give us a call and we will be happy to arrange a free consultation with one of our specialist IP lawyers.
Written by Anastasia Troshkova, Solicitor
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