From The Student Research Fellows Blog: From Totes to Suits

Trade dress has been brought out of the proverbial legal closet once more to protect a fashion designer, from, who else...another fashion designer.  This time, the trade dress infringement claim is accompanied by trademark infringement and unfair competition claims.  The Lanham Act covers all three claims, allowing fashion designers to protect the packaging of the product itself via trade dress and their brand and reputation via trademark and unfair competition claims.  The question of consumer confusion is what the courts are forced to determine, and with the two totes below, the judge that gets this case will have some interesting similarities to consider.

They may be casual tote bags, but a serious suit has come from them.  Designer Christian Audigier's Nervous Tattoo, Inc. is being sued by Marc Jacobs’ company for trade dress and trademark infringement.  Audigier produced nylon totes that appear to be a copy of the popular Marc Jacobs' nylon totes - from the shape, size, and overall design of the bag down to the actual trademarks stitched throughout. 

The trade dress infringement claim is based on the "unique, distinctive, and non-functional Marc Jacobs Pretty Nylon Tote Trade Dress."  The trademark infringement claim states Audigier's marks  "unlawfully bear marks confusingly similar to the Marc Jacobs Scrambled Trademark".  Marc Jacobs threw in an unfair competition claim as well, just to cover all his bases.

Marc Jacobs may have a stronger claim with the trade dress infringement because,  his design for a nylon tote bag, with the handles knotted at the top of the bag and tall, narrow pockets along each side is original - hence its popularity.  But what about the trademark infringement claim?  Audigier's marks may be very similar to Jacobs' marks in font type and size, but Audigier's marks clearly read "ED HARDY".  The consumer will know the source of the tote bag even though the two bags look alike.  So where's the confusion?  We'll have to wait and see what the court has to say.