How Product Brands Navigate Today's Dupe Economy with Tiffany Gehrke and Alexa Spitz

WEBVTT
00:00:00.959 --> 00:00:03.759
Hello and welcome to the Emerging Litigation Podcast.
00:00:03.759 --> 00:00:05.440
I'm your host, Tom Hagy.
00:00:05.440 --> 00:00:12.880
So, in fashion, furniture, and consumer goods, copying products is nothing new.
00:00:12.880 --> 00:00:18.160
What is new though is how openly it's happening and how brands are fighting back.
00:00:18.160 --> 00:00:30.399
In the last year, we've seen brands like Lululemon file for trademarks such as Lululemon Dupe, not to endorse knockoffs, but to gain leverage over how dupes are marketed and taken down online.
00:00:30.399 --> 00:00:44.399
More recently, William Sonoma sued online retailer Quint, not over product design, but over how Quintz advertises its furniture as low-priced alternatives to Pottery Barn and West Elm.
00:00:44.399 --> 00:00:54.880
And at no point during this conversation did I exhibit any expertise in any of these catalogs, or certainly uh in fashion, although I do have a nice couch.
00:00:54.880 --> 00:00:57.359
These moves signal something bigger.
00:00:57.359 --> 00:01:09.599
In the modern dupe economy, the legal battle is shifting away from who owns a design and toward how products are described, compared, and framed for consumers.
00:01:09.599 --> 00:01:11.280
So that's a big difference.
00:01:11.280 --> 00:01:17.120
Today's guests are Tiffany Gehrke and Alexa Spitz of Marshall Gerstein.
00:01:17.120 --> 00:01:19.599
They've been tracking this shift closely.
00:01:19.599 --> 00:01:32.159
They argue that trademark strategy, advertising law, and platform enforcement are converging, and that today's Inspired By product may be tomorrow's infringement or false advertising dispute.
00:01:32.159 --> 00:01:34.239
So let me say a little bit more about the two of them.
00:01:34.239 --> 00:01:40.719
Tiffany Gehrke is a partner and chair of the Trademarks and Copyrights Practice Group at Marshall Gerstein and Boren.
00:01:40.719 --> 00:01:49.840
She advises companies ranging from global brands to startups on trademark strategy, brand enforcement, and IP litigation.
00:01:49.840 --> 00:02:01.200
She's got a lot of experience enforcing and defending IP rights in federal courts and before the USPTO, widely recognized for her strategic solutions-oriented approach to brand protection.
00:02:01.200 --> 00:02:08.560
She got her JD with a Certificate and Trial Advocacy from Loyola University, Chicago College of Law.
00:02:08.560 --> 00:02:10.639
With her is Alexa Spitz.
00:02:10.639 --> 00:02:15.599
She's an associate in the Trademarks and Copyrights Practice Group at Marshall Gears Teen and Bourne.
00:02:15.599 --> 00:02:24.800
She focuses on trademark strategy, enforcement, and emerging IP issues at the intersection of fashion, technology, and digital commerce.
00:02:24.800 --> 00:02:28.240
She's a graduate of the Boston College Law School.
00:02:28.240 --> 00:02:34.560
This is Alexa's first time on the podcast, and I don't know, uh Tiffany, I think we're a number of three or four.
00:02:34.560 --> 00:02:37.039
So um it's a pleasure to have her back.
00:02:37.039 --> 00:02:42.879
I will say, uh, for a first timer, Alexa was pretty bold in bringing visual aids.
00:02:42.879 --> 00:02:44.879
So she's off to a good start.
00:02:44.879 --> 00:02:51.360
Which will only work when you uh when you watch this on YouTube or some other video platform.
00:02:51.360 --> 00:02:57.840
And I should reference that this uh podcast is based on an article that they wrote for Law 360.
00:02:57.840 --> 00:02:59.840
I'll put a link to that in the show notes.
00:02:59.840 --> 00:03:09.039
And now, here is my interview, my discussion, my wide-ranging conversation with Tiffany Gehrke and Alexa Spitz.
00:03:09.039 --> 00:03:11.360
Of Marshall Gerstein and Boren.
00:03:11.360 --> 00:03:12.960
I hope you enjoyed it.
00:03:12.960 --> 00:03:28.240
Tiffany Gherkey, Alexa Spitz, thank you very much for joining me on the Emerging Litigation Podcast today.
00:03:28.639 --> 00:03:29.680
Thanks for having us.
00:03:29.680 --> 00:03:31.360
It's a pleasure to be here.
00:03:31.759 --> 00:03:37.199
And as I said, uh Tiffany, this is your third time, and there will be a sport jacket of some kind or a hoodie.
00:03:37.199 --> 00:03:39.120
I think I'm gonna go with the hoodie as I talked about.
00:03:39.120 --> 00:03:46.879
In your article, which I've referenced, it notes that dupe no longer means only counterfeit goods intended to trick consumers.
00:03:46.879 --> 00:04:08.879
It can also mean lower cost or inspired by uh that's in quotes alternative that doesn't intend to confuse consumers about the source of the of the product, but practically what facts move a product from permissible, quote unquote, inspired by competition into actionable trademark or trade dress infringement?
00:04:08.879 --> 00:04:11.439
And where do you see the hardest gray areas?
00:04:11.919 --> 00:04:22.079
You know, I would say that it comes down to what is and is not protectable because not every element of a brand is eligible for trademark protection.
00:04:22.079 --> 00:04:29.519
And we actually got a really interesting case recently out of the Southern District of New York of Paulo versus Sol de Janeiro.
00:04:29.519 --> 00:04:31.600
Are you familiar with that case, Tom?
00:04:32.240 --> 00:04:32.560
No.
00:04:32.560 --> 00:04:33.040
No.
00:04:33.040 --> 00:04:33.920
I'd like to hear more.
00:04:33.920 --> 00:04:34.800
I'd like to hear more of that.
00:04:35.120 --> 00:04:35.600
Oh, you would.
00:04:35.600 --> 00:04:35.839
Okay.
00:04:35.839 --> 00:04:36.639
Well, that's wonderful.
00:04:36.800 --> 00:04:40.160
So for those that see how organic that was?
00:04:40.160 --> 00:04:41.680
Go ahead.
00:04:41.680 --> 00:04:42.240
Tell me that.
00:04:45.120 --> 00:04:52.399
For those who are not familiar with the party, Sol de Janeiro is the maker of the Brazilian Bum Bum brand body cream.
00:04:52.399 --> 00:04:59.519
And I actually I have the jars here if anyone for my visual learners out there say anyone has seen this.
00:04:59.839 --> 00:05:00.560
That's a first.
00:05:00.800 --> 00:05:02.879
Yes, this lotion out on shelves.
00:05:02.879 --> 00:05:08.240
This is the disputed trade dress coming out of the Southern District of New York made by Sol de Janeiro.
00:05:08.240 --> 00:05:16.879
Um, and Apollo is the maker of a nutrius brand body cream that you may or may not have seen on shelves at Costco.
00:05:16.879 --> 00:05:22.399
And it's supposed to be a lower cost alternative to the Sol de Janeiro body cream.
00:05:22.399 --> 00:05:35.600
And so what happened here was Apollo decided to bring a declaratory judgment action in New York against Sol de Janeiro to get their trade dress decided to be functional and therefore not protectable.
00:05:35.600 --> 00:05:41.360
So then Sol de Janeiro would not be able to sue Apollo for trade dress infringement.
00:05:41.360 --> 00:05:44.800
And just for reference, I also have Apollo's Nutrius brand.
00:05:45.199 --> 00:05:45.680
Let's see that.
00:05:45.680 --> 00:05:46.240
Yeah, okay.
00:05:46.240 --> 00:05:46.720
Oh wow.
00:05:46.720 --> 00:05:49.360
Sure.
00:05:49.600 --> 00:05:52.000
And then side by side, you know, these two.
00:05:52.160 --> 00:05:54.319
So it's what a coincidence that I have both of those.
00:05:54.319 --> 00:05:56.639
Oh, yeah, I'm sure you're in my dressing room.
00:05:57.040 --> 00:05:59.199
Because everyone should, the essentials, hair and makeup.
00:06:00.240 --> 00:06:00.879
Bum bum.
00:06:01.199 --> 00:06:01.360
Yeah.
00:06:01.360 --> 00:06:01.759
Okay.
00:06:01.759 --> 00:06:03.040
So we'll explore that.
00:06:03.040 --> 00:06:04.399
Those are the lotions.
00:06:04.399 --> 00:06:12.079
And uh unfortunately for Sol de Janeiro, the court found that their trade dress was functional and therefore not protectable.
00:06:12.079 --> 00:06:21.680
And so they weren't ultimately able to bring an infringement action because the particular trade dress that they would have wanted to assert against Apollo is not protectable at all.
00:06:21.680 --> 00:06:42.079
So I think that that's really helpful for brands on both sides of the dupe economy to keep in mind when they are designing their dupe products, uh things that could lead to a liability risk and also for enforcement purposes, the types of elements of a product that you could enforce against someone else because you could have the absolute worst of intentions to rip someone off to copy.
00:06:42.079 --> 00:06:46.959
But if you select an element of their product that's not protectable, then there's no liability.
00:06:47.279 --> 00:06:47.600
Okay.
00:06:47.600 --> 00:06:48.240
Wow.
00:06:48.240 --> 00:06:49.439
All right, good.
00:06:49.439 --> 00:07:00.000
Um, yeah, and and I think a lot of people I sense a lot of people might be also trying to dupe my podcast because they see this and they think, wow, that guy's onto something, right?
00:07:00.160 --> 00:07:00.560
Mm-hmm.
00:07:00.800 --> 00:07:01.120
Okay.
00:07:01.120 --> 00:07:02.639
So moving on to the next one.
00:07:02.639 --> 00:07:06.079
So because you had a visual aid, let's let's let's stick with you, Alexa.
00:07:06.079 --> 00:07:10.800
Um, and your name Alexa, does that come up as a problem ever?
00:07:11.680 --> 00:07:12.639
Regularly, yes.
00:07:12.639 --> 00:07:13.920
Yes, yes, okay.
00:07:14.000 --> 00:07:14.639
Just yeah.
00:07:14.639 --> 00:07:15.839
You and Siri.
00:07:16.319 --> 00:07:20.399
Yes, you you can change the Amazon to to be called computer.
00:07:20.399 --> 00:07:23.199
So I highly recommend friends and family ever the less.
00:07:23.439 --> 00:07:23.680
Okay.
00:07:23.680 --> 00:07:24.079
All right.
00:07:24.079 --> 00:07:26.319
I I just I don't know why that just occurred to me.
00:07:26.319 --> 00:07:34.480
Um, so sticking with with you, Alexa, you describe um a runway to dupe pipeline that can be extremely fast.
00:07:34.480 --> 00:07:41.120
Sometimes a dupe version can get out before the uh the actual version, the original version, to market.
00:07:41.120 --> 00:07:43.199
So, hey, we're quick.
00:07:43.199 --> 00:07:47.199
They obviously don't have a lot of obstacles to somebody doing things legitimately.
00:07:47.199 --> 00:07:49.439
I didn't mean to imply they weren't doing it legitimately.
00:07:49.439 --> 00:07:58.160
Anyway, you cite uh reporting that uh Shine released uh 2,000 to 10,000 new styles each day.
00:07:58.160 --> 00:08:01.120
And that was uh in in 2021.
00:08:01.120 --> 00:08:03.439
And that Zara, is it pronounced Zara?
00:08:04.000 --> 00:08:05.519
Zara and Shein, yes.
00:08:05.759 --> 00:08:06.000
Okay.
00:08:06.000 --> 00:08:06.959
Oh, Shein.
00:08:07.279 --> 00:08:07.519
Yes.
00:08:07.680 --> 00:08:09.519
I got Zara right and Sheehan wrong.
00:08:09.519 --> 00:08:10.399
Thank you for correcting me.
00:08:10.399 --> 00:08:11.199
I don't get out much.
00:08:11.199 --> 00:08:14.319
And that Zara, I think the shirt is from Costco, frankly.
00:08:14.319 --> 00:08:22.160
And and that Zara releases new styles multiple times weekly, totaling up to about a thousand items per month.
00:08:22.160 --> 00:08:33.120
So, how should brand owners adapt uh their monitoring and capturing evidence and their enforcement triage when product cycles move that fast?
00:08:33.679 --> 00:08:52.080
It can feel overwhelming, especially in the retail beauty makeup uh sector where dupes do hit the shelves often before the original product, especially for smaller designers where their production might take a little bit longer than say a Zara or a Shein that does this as their business.
00:08:52.080 --> 00:09:04.159
And uh, as difficult as that might be, and some brands are finding that traditional civil litigation, depending on their objectives for enforcement, may not be their best option anymore in the dupe economy.
00:09:04.159 --> 00:09:10.720
What I think is really important to address is the risk of speed for the follow-on dupe brands.
00:09:10.720 --> 00:09:22.080
Because I feel like that doesn't get as much attention because the pressure is so great for these brands who, because they are follow-on brands, don't have the same uh trademark brand reputation as the original brand.
00:09:22.080 --> 00:09:29.600
And so it really is kind of a race to get to the market first and capture as much of this new demand for a lower cost alternative as possible.
00:09:29.600 --> 00:09:55.679
And so it's essential for these brands to start baking into their product design and production process and IP review, some sort of system where they look at perhaps the product that is inspiring their creation, thinking what elements are protectable in that product, ideally working with a licensed trademark attorney, and then looking at perhaps even in the product design and development phase, you know, what are we trying to produce?
00:09:55.679 --> 00:09:57.120
How far is too far?
00:09:57.120 --> 00:10:01.840
What elements are we going to make look similar to the original product?
00:10:01.840 --> 00:10:03.600
Because that does serve a purpose.
00:10:03.600 --> 00:10:22.639
Like as I showed you with the lotions, it's super helpful to have a jar in a Costco warehouse that slightly resembles the item that it's supposed to be a lower cost version for to signal to consumers, hey, if you liked this thing or you would like to have this thing, uh, here's a lower cost alternative for you, just to signal that there's some sort of an association.
00:10:22.639 --> 00:10:47.360
So I think it is really important for, especially dupe brands in this fast-paced economy, to take a step back, do a quick IP review, consult an attorney, and really make sure that the products that you are putting to market have a lower risk of receiving a cease and dislist letter, ending up in court, or the subject of perhaps a takedown notice online for a retailer.
00:10:47.759 --> 00:10:50.080
You mentioned working with a licensed trademark attorney.
00:10:50.080 --> 00:10:53.360
Where would somebody find uh someone like that?
00:10:53.360 --> 00:10:54.799
I'm gonna move on.
00:10:54.799 --> 00:10:58.639
So you you're um uh so let's let's move on.
00:10:58.639 --> 00:11:01.840
So let's uh Tiffany, it's uh let's turn to you.
00:11:01.840 --> 00:11:04.559
So hold on a second.
00:11:04.559 --> 00:11:05.519
This is blue.
00:11:05.519 --> 00:11:06.320
Yes.
00:11:06.320 --> 00:11:09.440
Why trademarks still sit at the center and what they're for?
00:11:09.440 --> 00:11:20.879
So you frame uh trademarks as protecting a brand's name and reputation and and as a consumer protection mechanism, preventing confusion about affiliation, sponsorship, and endorsement.
00:11:20.879 --> 00:11:32.879
When brands communicate about dupes publicly or pursue platform enforcement, how do you recommend balancing consumer protection, brand messaging, and the optics of overenforcement?
00:11:33.200 --> 00:11:39.840
Yeah, so a lot of that depends on the nature of both the original product and what um the dupe would be.
00:11:39.840 --> 00:11:43.200
For example, the first question is is this something that's safe?
00:11:43.200 --> 00:11:43.600
Right?
00:11:43.600 --> 00:11:49.679
Is this a product that's going to, you know, if it's not yours, is it going to harm a consumer, right?
00:11:49.679 --> 00:11:56.720
You might have a different, uh, more heightened um, you know, strategic approach to preventing those from reaching consumers.
00:11:56.720 --> 00:12:00.799
The other thing is looking at, you know, this lower cost alternative.
00:12:00.799 --> 00:12:03.440
Is it fairly described as that?
00:12:03.440 --> 00:12:05.360
Is it actually a comparable product?
00:12:05.360 --> 00:12:06.240
Is it not?
00:12:06.240 --> 00:12:13.120
Um, you know, you want to look at making sure that your, if you're the brand owner, say you're a luxury brand owner, right?
00:12:13.120 --> 00:12:25.360
Consumers are coming to you and for your products for a certain quality, maybe, maybe a very um, you know, niche market, maybe there's only limited quantities, you know, there's things that they're looking for with that.
00:12:25.360 --> 00:12:31.120
Maybe it's ethically made, you know, there's all sorts of things that um your brand could signal.
00:12:31.120 --> 00:12:41.279
And so when you're looking at what the, you know, a dupe product may be, if it's a counterfeit dupe, you're gonna take a harder approach to that, right?
00:12:41.279 --> 00:12:46.399
And be a lot more forceful about it because that is not permitted, right, under the law.
00:12:46.399 --> 00:12:51.919
If it's an inspired by dupe, well, then you have to look sort of like what Alexa was talking about at the elements.
00:12:51.919 --> 00:12:53.519
What elements are in common?
00:12:53.519 --> 00:12:58.799
What are what might we have that's protectable that we could enforce against the other side?
00:12:58.799 --> 00:13:01.759
And then also look at the dynamics of the power.
00:13:01.759 --> 00:13:03.200
Who is the other party?
00:13:03.200 --> 00:13:04.799
What is their intention?
00:13:04.799 --> 00:13:12.639
You know, is this like uh, you know, a pop-up, you know, one person shop that thought that they were, you know, kind of repurposing things?
00:13:12.639 --> 00:13:20.080
Or is this a you know an enterprise organization that is gonna, you know, just flood the market with these products?
00:13:20.080 --> 00:13:23.279
And you might take two different approaches depending on that.
00:13:23.759 --> 00:13:24.080
Okay.
00:13:24.080 --> 00:13:25.039
All right.
00:13:25.039 --> 00:13:32.159
So um, so you describe a common strategy of layering trademark and trade dress with copyright.
00:13:32.159 --> 00:13:39.679
So fabric designs and prints and design patents like ornamental designs to make duplication harder.
00:13:39.679 --> 00:13:47.039
So for fashion and beauty companies, uh, what does an effective layered IP portfolio look like in practice?
00:13:47.039 --> 00:13:49.919
And what are the most common gaps you see?
00:13:50.480 --> 00:13:54.000
So I think in practice, it depends on the nature of the product.
00:13:54.000 --> 00:13:56.799
Is this something, so if we talk fashion first, right?
00:13:56.799 --> 00:14:00.000
Is this something that you expect to be one season and done?
00:14:00.000 --> 00:14:03.279
Is this something that you're gonna add to your permanent collection?
00:14:03.279 --> 00:14:08.480
Is this something that you know you have in sort of different short-term and long-term goals for?
00:14:08.480 --> 00:14:11.039
And you might do two different approaches depending on that.
00:14:11.039 --> 00:14:19.519
If this is a long-term product or something that you think could go, you know, the distance, um, you don't always know that ahead of time.
00:14:19.519 --> 00:14:25.440
But if you think it might be, then you're gonna want to look at things like design patent that takes a little bit longer to get, right?
00:14:25.440 --> 00:14:28.320
You might want trade dress protection if it's eligible for that.
00:14:28.320 --> 00:14:36.000
And then you would want to uh look at possibly copyright protection, you know, depending on the nature of what the product is.
00:14:36.000 --> 00:14:38.320
Sometimes it's eligible, sometimes it's not.
00:14:38.320 --> 00:14:44.480
Um, but but the longer term protection are more like the design patent side of things in addition to your trademarks.
00:14:44.480 --> 00:14:49.919
If it's short term, then you want to look at the cost-benefit analysis.
00:14:49.919 --> 00:14:52.159
Like, are you going to be enforcing this against others?
00:14:52.159 --> 00:14:57.120
What do you anticipate, you know, your price point versus you know enforcement cost might be?
00:14:57.120 --> 00:15:06.799
And typically copyright protection is um fairly cheap to register, and you need to have that registration here in the US to bring a lawsuit and get damages.
00:15:06.799 --> 00:15:16.399
Um, so if it's you know one of the short-term products, that might be a really good first step beyond whatever you know your regular trademark protection might be for the product.
00:15:16.399 --> 00:15:23.519
Um if we turn to like the the beauty side of it, the other part of your uh question is you know, there's other things that you could think about.
00:15:23.519 --> 00:15:26.879
What part of your product is appealing to competitors?
00:15:26.879 --> 00:15:28.480
Is it the brand name?
00:15:28.480 --> 00:15:29.840
Is it the product name?
00:15:29.840 --> 00:15:32.799
Is it the shape of the container it comes in, right?
00:15:32.799 --> 00:15:36.480
Is it the design that makes it, you know, look really neat?
00:15:36.480 --> 00:15:40.879
Um and then you want to think about protecting those things as well.
00:15:40.879 --> 00:15:51.279
And some containers could even be eligible for you know utility patent uh protection, which would take a significantly longer time than the other types of protection we're talking about.
00:15:51.279 --> 00:15:58.559
But you want to layer on what is the thing that people are gonna want to copy and then look at how to best protect that.
00:15:58.960 --> 00:15:59.519
Yeah.
00:15:59.519 --> 00:16:00.240
Yeah.
00:16:00.240 --> 00:16:08.240
I I I thought about this when I was visiting my daughter in Los Angeles, and in her neighborhood is a uh Vietnamese grocery store.
00:16:08.240 --> 00:16:16.879
And um when I went in, when I went in, if you blurred your eyes, you thought you recognized all of the products.
00:16:17.919 --> 00:16:18.240
Yeah.
00:16:18.480 --> 00:16:20.960
You know, like sugar pops, yeah, you know.
00:16:20.960 --> 00:16:24.240
Um I don't remember which one is which, but Kellogg with the rooster and everything.
00:16:24.240 --> 00:16:27.600
The colors were the same, the fonts were the same.
00:16:27.600 --> 00:16:30.320
I'm like, how are they getting away with this?
00:16:30.559 --> 00:16:37.519
But um well, that could be the other where we see the gap that you asked about is that is monitoring, right?
00:16:37.519 --> 00:16:41.440
You you need to monitor and see what's out there if you're the brand holder.
00:16:41.440 --> 00:17:01.039
And it could be that the example of what you're you know, sort of describing here, it could be that there's lack of awareness of it, or it could be that in the context of you know flavored cereal X and all of the other similar cereals, that the elements that they all have in common might not be something protectible.
00:17:01.039 --> 00:17:07.519
And it could be they, you know, have sort of towed that line of inspired by versus directly copying.
00:17:07.839 --> 00:17:08.960
They were inspired, yeah.
00:17:08.960 --> 00:17:12.559
Um but the good news is I discovered a new soda there.
00:17:12.559 --> 00:17:14.160
It was coconut soda.
00:17:14.480 --> 00:17:15.200
Oh, interesting.
00:17:15.200 --> 00:17:16.000
I don't know that one.
00:17:16.319 --> 00:17:17.039
I was blown away.
00:17:17.039 --> 00:17:18.079
I can't remember the name of it.
00:17:18.079 --> 00:17:19.200
I think it's called Coco.
00:17:19.200 --> 00:17:19.680
Yeah.
00:17:19.680 --> 00:17:22.319
Uh anyway, I was it's quite refreshing.
00:17:22.319 --> 00:17:25.359
So um, so let's come back to Alexa.
00:17:25.359 --> 00:17:28.319
Uh so Eli highlight the Lululemon.
00:17:28.319 --> 00:17:30.079
Am I pronouncing that one right?
00:17:30.079 --> 00:17:35.759
Uh the Lululemon securing a regist US registration for Lululemon Dupe.
00:17:35.759 --> 00:17:39.599
Uh and it is, never mind.
00:17:39.599 --> 00:17:40.640
Oh my gosh.
00:17:40.640 --> 00:17:42.559
I was gonna go somewhere with dupe.
00:17:42.559 --> 00:17:45.359
I don't know, dua lipa or something.
00:17:45.359 --> 00:17:47.519
And that would show that I'm hip.
00:17:47.519 --> 00:17:50.319
That's what we I'm trying to relate to the younger audience.
00:17:50.319 --> 00:17:52.319
Oh, anyway, so I'll start over.
00:17:52.319 --> 00:17:55.039
You highlighted Lululemon uh securing a U.S.
00:17:55.039 --> 00:18:15.599
registration for Lululemon Dupe with Dupe disclaimed, and explain how foreign registration pathways can support a US registration without US use, though use may still be needed to sue uh or or win, and non-use can create uh vulnerability to cancellation.
00:18:15.599 --> 00:18:29.759
So the question is what's the strategic value of registering a mark like Brand Dupe, brand dupe, and how uh should brands think about the benefits, uh platform tools, messaging, et cetera, versus the limitations.
00:18:29.759 --> 00:18:31.759
Go ahead.
00:18:32.480 --> 00:18:48.880
Well, I think it It's a very unique tool that brands can use, especially in e-commerce, and they can use that for takedown notices, and this is a really great tool for brands because it can help to get products removed faster.
00:18:48.880 --> 00:19:00.559
So if you are going through the typical civil litigation process and you send a cease and desist letter and then you file an action, we're looking at years before you could possibly obtain an injunction or get damages.
00:19:00.559 --> 00:19:04.559
And if that's your goal is getting damages, then perhaps that's a great option.
00:19:04.559 --> 00:19:21.920
However, if your goal is really like Tiffany was saying, if you have a product that's hitting shelves for a short period of time, you just really want to stop the dupes for your season or the time that you're going to be selling it, then on the other hand, a takedown notice with Amazon or another online retailer might be your best option.
00:19:21.920 --> 00:19:30.960
And often when you're submitting a takedown notice, you do have to prove that you have registered trademark rights and whatever it is that you are trying to have taken down.
00:19:30.960 --> 00:19:39.200
So when you uh have someone speaking about your product, like I know that the Lululemon Dupe leggings got quite a bit of attention.
00:19:39.200 --> 00:19:50.880
If nowhere anyone is saying these are Lululemon brand leggings, or you see the little Lulu logo or any of their registered trademarks, these dupe companies are getting very smart.
00:19:50.880 --> 00:19:53.119
Uh there's not a lot that the brand can do.
00:19:53.119 --> 00:19:58.559
However, they can still control how brands or dupe companies are speaking about their brand.
00:19:58.559 --> 00:20:12.319
So if they're they're marketing this is a Lululemon Dupe, and Lululemon over here has a registered trademark for Lululemon Dupe in connection with those goods and services, then they could go to Amazon and say, hey, this is our trademark.
00:20:12.319 --> 00:20:21.119
This dupe company is infringing it, and we would like to have their content taken down so that users can't buy anymore and they have to go to legitimate products.
00:20:22.079 --> 00:20:26.720
If you were to make a candy and call it Lululemon Drops, do you guys think there'd be a problem with that?
00:20:26.720 --> 00:20:28.480
Because I'm thinking of going there.
00:20:28.880 --> 00:20:35.440
Well, would there be source confusion by uh, you know, someone purchasing candy versus purchasing athletic apparel?
00:20:36.000 --> 00:20:36.240
Yeah.
00:20:36.240 --> 00:20:38.480
Well, and and Tiffany, come on.
00:20:38.480 --> 00:20:41.119
Speaking of names, have you thought of opening up a jewelry store?
00:20:41.119 --> 00:20:42.160
Has that ever come up?
00:20:42.559 --> 00:20:43.279
Not once.
00:20:43.279 --> 00:20:47.039
I think we should call ourselves Tiffany and Co.
00:20:47.039 --> 00:20:49.920
because Tiffany is our fearless leader and we're co.
00:20:49.920 --> 00:20:50.799
I'm Co.
00:20:50.799 --> 00:20:53.519
This would be so great.
00:20:54.480 --> 00:20:55.519
Let's do that.
00:20:55.519 --> 00:20:57.759
I look forward to your lawsuit.
00:20:57.759 --> 00:21:00.319
Um that'll that'll be fun.
00:21:00.319 --> 00:21:01.759
We'll we'll cover that on the podcast.
00:21:01.759 --> 00:21:02.799
From from prison.
00:21:02.799 --> 00:21:04.240
I know it's not a criminal thing.
00:21:04.240 --> 00:21:10.079
Um so so back speaking of Tiffany, so you describe, okay, is it Aritzia?
00:21:10.480 --> 00:21:11.519
Aritzia, yes.
00:21:13.039 --> 00:21:13.359
Okay.
00:21:13.359 --> 00:21:15.039
I took never mind.
00:21:15.039 --> 00:21:38.000
Uh so you describe uh Aritzia's application for Aritzia dupe, um, the the USPTO's continued disclaimer requirement, uh, the suspension pending issuance of a foreign registration, and Aritzia's policy argument that broader protection is needed to combat low-quality counterfeit goods like iwear, uh low-quality counterfeit goods online.
00:21:38.000 --> 00:21:53.039
Um so the question is if if a brand succeeds in registering brand dupe, you know, the name brand dupe without disclaiming dupe, how might that uh change platform takedown dynamics and brand control online?
00:21:53.519 --> 00:21:55.359
Yeah, so it might make it easier.
00:21:55.359 --> 00:22:08.799
So, right now, what it is, you know, if you have a word disclaimed, it means you're not You know, claiming rights to that mark outside of the registration, and that it's usually a generic or descriptive term in connection with the goods or services offered.
00:22:08.799 --> 00:22:24.319
And for a lot of the platforms, the e-commerce platforms that are out there, you want the strongest registration you have to be able to hand it to them so that they don't have to look at anything other than you have the registration, somebody's using the same terms and we're done, right?
00:22:24.319 --> 00:22:25.839
And you can get it taken down.
00:22:25.839 --> 00:22:32.319
Um, when there's disclaimers, sometimes that allows the recipient of the takedown notice, right?
00:22:32.319 --> 00:22:40.079
The defendant, for lack of a better word, to introduce a little more ambiguity in combating the takedown or request.
00:22:40.079 --> 00:22:47.200
And um, you know, most of the platforms, not all, because some do have dispute resolution processes within them.
00:22:47.200 --> 00:22:53.200
Um, others they they don't want to end up as, you know, sort of the arbitrator of these claims.
00:22:53.200 --> 00:22:55.279
They want clear lines that they can follow.
00:22:55.279 --> 00:22:57.200
And then that's all that they're gonna do, right?
00:22:57.200 --> 00:23:00.559
They don't want liability, they want an easy determination.
00:23:00.559 --> 00:23:10.240
And so having the registration without dupe disclaimed could arguably make it easier for them to enforce across all these different platforms.
00:23:10.640 --> 00:23:11.119
Gotcha.
00:23:11.119 --> 00:23:11.599
Okay.
00:23:11.599 --> 00:23:22.000
So you note that in digital marketplaces and social platforms, enforcement often turns on registered trademark rights that are tailored to evolving enforcement needs.
00:23:22.000 --> 00:23:31.680
So the question is, what are the most important steps brands can take to align trademark filing strategy with platform enforcement realities, especially for social commerce?
00:23:31.920 --> 00:23:37.839
Yeah, you want to make sure you're at least getting an application on file to cover what you're actually doing, right?
00:23:37.839 --> 00:23:40.160
Sometimes you come up with a great brand, right?
00:23:40.160 --> 00:23:54.880
You've got the, you maybe have the trademark on file, whether it's applied for or registered by that point with certain goods or services, but then things evolve and you add to your product line or you make a very, you know, you add another component like a sub-brand to it.
00:23:54.880 --> 00:24:04.559
And you're not always as fast or as diligent with those um add-on products as you are, you know, they're not being filed as you're going to market.
00:24:04.559 --> 00:24:11.039
Um, but if you're gonna be fighting them online, you have to make sure that you actually have coverage for what you're asking for, right?
00:24:11.039 --> 00:24:14.799
So be be diligent about how you describe what your goods and services are.
00:24:14.799 --> 00:24:22.720
And several of the platforms will allow you um to use a pending US application as sort of your foot in the door for it.
00:24:22.720 --> 00:24:25.599
So at least getting it on file can be really helpful.
00:24:26.000 --> 00:24:27.039
Okay, gotcha.
00:24:27.039 --> 00:24:35.119
So the conclusion of your article uh suggests that the legal response is no longer confined to litigation alone.
00:24:35.119 --> 00:24:43.839
Trademark strategy, platform enforcement, public-facing initiatives are coming together to manage reputational risk and consumer confusion.
00:24:43.839 --> 00:24:46.400
So, what's your near-term forecast?
00:24:46.400 --> 00:24:58.319
Do you expect uh doctrinal, or is it doctrinal, change in trademark trade dress law uh are mainly uh more innovation and how brands build and deploy enforcement rights?
00:24:58.319 --> 00:25:05.039
You can answer the doctrinal, doctrinal uh pronunciation question first and move on to your substantive answer.
00:25:05.519 --> 00:25:09.119
My first question is I believe it is doctrinal, but I actually don't know.
00:25:09.119 --> 00:25:12.160
Um on to the substantive question.
00:25:12.160 --> 00:25:16.720
Uh I think um we're gonna see more innovation in existing law right now.
00:25:16.720 --> 00:25:26.319
I think that's usually what pushes pushes sort of the changes at the statute or, you know, in the Lanham Act later is in practice what's happening, right?
00:25:26.319 --> 00:25:37.359
Because sometimes people are shoehorning in, you know, claims or causes of actions that don't quite fit exactly what we're used to, you know, the law meaning or how the law is applied.
00:25:37.359 --> 00:25:43.279
And I think um, you know, what is that old phrase like necessity is the driver of in uh of innovation?
00:25:43.279 --> 00:25:44.079
Sutter of invention.
00:25:44.079 --> 00:25:45.119
There we go.
00:25:45.119 --> 00:25:45.759
So I got that one.
00:25:45.759 --> 00:25:46.079
Yeah.
00:25:46.079 --> 00:25:48.400
And I think the same is true for trademark law, right?
00:25:48.400 --> 00:25:54.000
It's once you see that things are not workable, that's sort of where policy shifts happen.
00:25:54.000 --> 00:26:04.880
But right now, there's still enough creativity with the existing framework that I don't see a huge change happening in result, you know, as a result of the dupe economy at this time.
00:26:04.880 --> 00:26:09.279
But I do think people are getting more creative with how they're applying existing law.
00:26:09.599 --> 00:26:09.920
Okay.
00:26:09.920 --> 00:26:12.319
And I didn't, oh, go ahead.
00:26:12.319 --> 00:26:13.599
Alexa, please chime in.
00:26:13.839 --> 00:26:23.519
I would also like to add, I feel like what we're seeing, especially in the retail space, is brands starting to utilize more the tools that are available to them or realize maybe that they should.
00:26:23.519 --> 00:26:38.559
So going back to the Sol de Janeiro case with their trade dress being held to be functional and not protectable, very importantly, Soul de Janeiro did not register the trademark or the trade dress that was disputed in this particular action.
00:26:38.559 --> 00:26:48.240
And so then, because of that, although it could still be protectable trade dress, they bore the burden of proving at trial that their trade dress was not functional.
00:26:48.240 --> 00:26:50.000
And that was a heavy burden.
00:26:50.000 --> 00:26:57.759
And I think uh, especially with trade dress, it's helpful to think about what you actually have to prove for functionality.
00:26:57.759 --> 00:27:05.200
So functionality isn't just, oh, my product design or packaging is the only or the best way to be functional.
00:27:05.200 --> 00:27:11.920
Uh, it really is just anything that puts competitors at a non-reputation related disadvantage.
00:27:11.920 --> 00:27:30.079
So if the in the Sol de Janeiro case, if the jar is easier to open, if the color scheme makes it easier for consumers to tell what the scent is going to be, like all of those little things that aren't really a make or break difference, but could put competitors at a slight disadvantage, that could lead to a finding of functionality.
00:27:30.079 --> 00:27:40.559
And so it is so valuable for brands to seek protection, get registrations, and not just rely on their common law rights of using the mark of the trade dress in commerce.
00:27:41.519 --> 00:27:48.000
Do you think because of the subject matter that your your practice is more fun than uh some other fractaries?
00:27:48.319 --> 00:27:49.200
We think so.
00:27:50.559 --> 00:27:53.599
I mean, no one's really physically getting hurt or anything.
00:27:53.599 --> 00:27:58.720
You don't have sick people, you just have that looks like my design.
00:27:58.720 --> 00:28:02.079
Um and I did want to I did want to ask that question too.
00:28:02.079 --> 00:28:08.319
Uh Alexa, you're you're wearing glasses that are were especially trendy during the last presidential administration.
00:28:08.319 --> 00:28:12.559
Uh they are aviators for people who can't uh see you.
00:28:12.559 --> 00:28:14.720
Um so what's that brand?
00:28:14.720 --> 00:28:16.079
I'm not gonna go there.
00:28:16.079 --> 00:28:27.759
So the the one thing I did learn in in working with an antitrust firm, all the eyeglass frames in the world are are built by like two companies.
00:28:28.079 --> 00:28:29.039
Luxotica.
00:28:29.039 --> 00:28:29.839
Yeah.
00:28:31.200 --> 00:28:32.319
Well done.
00:28:32.319 --> 00:28:36.160
Else uh else else El Salor is the other.
00:28:36.160 --> 00:28:40.240
Uh and I think they merged, so it's El Salor Luxotica.
00:28:40.240 --> 00:28:43.440
So you can't buy anything uh anymore.
00:28:43.440 --> 00:28:44.720
It's just funny too.
00:28:44.720 --> 00:28:46.880
It's the same with perfumes and things like that.
00:28:46.880 --> 00:28:49.920
You know, you think they're there there are these flavors companies.
00:28:49.920 --> 00:28:52.000
You guys probably know all this, but I didn't know this.
00:28:52.000 --> 00:28:57.759
Colors and fit flavors, uh flavors and fragrances companies.
00:28:57.759 --> 00:28:59.680
It's like you buy Calvin Klein.
00:28:59.680 --> 00:29:02.720
I don't know why I picked that, but you buy like a Calvin Klein perfume.
00:29:02.720 --> 00:29:03.920
I don't know if they have one.
00:29:03.920 --> 00:29:07.039
But yeah, no, Calvin didn't make that in his basement.
00:29:07.039 --> 00:29:08.960
They some company made it, right?
00:29:08.960 --> 00:29:09.519
Okay.
00:29:09.519 --> 00:29:10.880
That's fascinating, Tom.
00:29:10.880 --> 00:29:12.000
Uh nice diversion.
00:29:12.000 --> 00:29:17.279
If you could uh offer just three takeaways from this podcast, what would you share with people?
00:29:17.759 --> 00:29:18.160
Sure.
00:29:18.160 --> 00:29:19.359
So I'll go first.
00:29:19.359 --> 00:29:24.720
I would really like to leave listeners of this podcast with a message of empowerment.
00:29:24.720 --> 00:29:34.480
I feel like with rapidly evolving technology and changing consumer preferences and just the speed at which everything is moving now, it can feel overwhelming.
00:29:34.480 --> 00:29:39.759
It can be scary for the follow-on dupe brands, the dreaded cease and desist letter, the lawsuit.
00:29:39.759 --> 00:29:48.319
Uh, and on the other hand, the original brands, the threat to their names and reputations like they've never seen before, it can be terrifying.
00:29:48.319 --> 00:30:00.720
But I think that for the dupe brands, this is an opportunity for them to capitalize on consumer demand for lower cost items that are still high quality, that just really hasn't been there before.
00:30:00.720 --> 00:30:03.119
So it's an exciting business opportunity for them.
00:30:03.119 --> 00:30:18.000
And then on the other hand, for the original brands, I think the dupe economy is an invitation for them to rise, to innovate, to create, to develop uh new ways to build brand loyalty, to protect their names and reputations.
00:30:18.000 --> 00:30:24.640
And I think that it is just such an exciting time to be in business, to be a consumer, to be a trademark attorney, especially.
00:30:24.960 --> 00:30:25.680
There you go.
00:30:26.000 --> 00:30:27.440
And it is just so wonderful.
00:30:27.440 --> 00:30:28.400
It's energizing.
00:30:28.400 --> 00:30:36.480
And so I really want to leave people with not a feeling of fear and the world is ending, and how can I ever protect my brand and I'm gonna get sued if I dupe a product?
00:30:36.480 --> 00:30:38.240
No, that is not it at all.
00:30:38.240 --> 00:30:39.920
There's still going to be a balance.
00:30:39.920 --> 00:30:46.240
And so I think it is just really an exciting time to be here and be involved in this industry.
00:30:46.240 --> 00:30:48.880
And so I hope that that's what people can take from this.
00:30:49.200 --> 00:30:50.160
Thanks, Alexa.
00:30:50.160 --> 00:30:51.680
Uh, the world is ending, by the way.
00:30:51.680 --> 00:30:53.440
Um so Tiffany, yeah.
00:30:54.240 --> 00:30:59.440
I think um, you know, sort of following on to what Alexa said is that you know, this is not a temporary thing.
00:30:59.440 --> 00:31:05.119
This, you know, dupe economy is ingrained in us and in our consuming culture at this point.
00:31:05.119 --> 00:31:11.759
Um, so I think be ready that it's here to stay and figure out what you're gonna do about it, depending on you know what your position is.
00:31:11.759 --> 00:31:19.599
Um and then I would say that, you know, brand, you know, brand owners are experimenting with proactive, unconventional trademark strategies.
00:31:19.599 --> 00:31:26.799
Um they're trying to influence messaging and improve enforcement leverage, uh, especially in the context of e-commerce platforms.
00:31:26.799 --> 00:31:29.920
And then lastly, to think about layered IP protection.
00:31:29.920 --> 00:31:41.440
You know, there's there's a lot of different options out there from trademark and trade address to copyright to design patents, or as we talked earlier, maybe even utility patents, depending on what you're you're looking to cover.
00:31:41.440 --> 00:31:48.079
Um and you need to be thoughtful and practical about how you're gonna apply that to what your product and your business goals are.
00:31:48.400 --> 00:31:51.200
Tiffany and Alexa, thank you very much for talking to me about this.
00:31:51.200 --> 00:31:52.799
This is an interesting topic to me.
00:31:52.799 --> 00:31:55.119
I know uh our listeners will enjoy it, so thank you.
00:31:55.440 --> 00:31:56.720
Thank you so much for having us.
00:31:56.720 --> 00:31:57.759
Thank you.
00:32:00.079 --> 00:32:03.519
That brings us to the end of this episode of the Emerging Litigation Podcast.
00:32:03.519 --> 00:32:05.839
Once again, I'm your host, Tom Hagey.
00:32:05.839 --> 00:32:08.480
If you like what you hear, please give us the rating.
00:32:08.480 --> 00:32:10.000
That always helps.
00:32:10.000 --> 00:32:17.599
And also follow us on uh, let's see, you can follow us on any major podcast platform, Apple, Spotify, all the rest.
00:32:17.599 --> 00:32:26.960
You can also check us out on YouTube for the video version and some clips and as well as Instagram and quite a few on LinkedIn as well.
00:32:26.960 --> 00:32:29.759
If you want to participate, give me a shout.
00:32:29.759 --> 00:32:32.559
My contact information is in the show notes.
00:32:32.559 --> 00:32:33.599
Thanks for watching.