Imitation is (NOT) the most sincere form of flattery

By Jennifer Williams

Reviewed by Michael Murphy and Anthony Arther, Esq. 

When deciding to spend thousands of dollars on your Birkin bag, the last thing you are thinking is what a great place it would be to store your groceries.  Imagine seeing a gallon of damp milk being shoved into the designer bag.  The very thought would make fashion connoisseurs everywhere cringe with horror.  Yet, does the fact that you are in a grocery store mean fashion and style is unimportant? I think the answer is no, and clearly Thursday Friday would agree. The Together Bag retails for $45 and is marketed by the sellers as an eco- friendly shopping bag that is great for groceries and the like. The added bonus is that the Together Bag carries an image on it that looks identical to the Birkin bag. Of course Hermes, ever protective of its design, is doing all it can to prevent the trend from catching on.

In the current lawsuit, Hermes claims trademark infringement of its Birkin bag.  To establish a trademark infringement claim, Hermes must show that it has a valid mark that is entitled to protection and that Thursday Friday’s actions are likely to cause confusion with its mark.  Entitlement to protection of a mark goes to how famous and widely known the mark is. Courts will consider the duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties, the amount, volume, and geographic extent of sales of goods or services offered under the mark, and the extent of actual recognition of the mark.

Hermes goes to great lengths to show that its mark is entitled to protection by pointing to the wait list of at least eighteen months for the coveted bag, the high number of bags sold, widespread fame evidenced by a book written about the Birkin bag, as well as television episodes that not only feature the bag but are centered around the bag (think Sex and the City). Further, Hermes points out in reference to the Birkin bag that ‘its design has become enormously identifiable and well recognized among the general public.’ For full official court document see Scribd.com

For purposes of assessing the likelihood of confusion courts consider eight factors:  (1) the strength of the mark; (2) the proximity or relatedness of the goods; (3) the marks’ similarity in appearance, sound, and meaning; (4) evidence of actual confusion; (5) the degree to which the parties’ marketing channels converge; (6) the type of goods and the degree of care customers are likely to exercise in purchasing them; (7) evidence of defendants’ intention in selecting and using the allegedly infringing mark; and (8) the likelihood that the parties will expand their product lines.

To that effort, Hermes points out that Thursday Friday’s use of photographs that bear resemblance to the Birkin bag is likely to lead consumers to believe that Thursday Friday has been authorized by Hermes.  Hermes goes on to point out that Thursday Friday has created the Together Bag with the intention to confuse the public and continuing to sell the bags will further damage Hermes and the public.

Without direct comments on the case, it is unclear what Thursday Friday’s response to these charges will be. However, some light is shed through its website which explains that ‘we’re inspired by consumerism, class, and iconography, but that doesn’t mean we are putting out precious, abstract concepts. Thursday Friday is everyday.’ The self proclaimed everyday aspect of Thursday Friday’s products seems to be in direct contrast with the way Hermes represents itself as a brand of luxury, thus establishing that Thursday Friday has no intention of confusing consumers into believing it is in the same class as Hermes.

The claim brought by Hermes has generated a lot of interest among the fashion conscious circles, however, there does not appear to be any word of ‘confusion among the public.’ It is true that there is a likeness between the two bags. If I saw the Together Bag on the shoulder of a shopper at my local grocer, I may have to do a double take. However, I feel confident that as soon as I took a good look, I would realize that the image of what looks to be a Birkin bag on a canvas tote is not actually or to be confused with the Birkin bag. Yet, Hermes may have a point in claiming that the likeness of the bags infringes on their trademark of the bag and calls into question the status of the iconic Birkin bag.

For now the question remains, does the Together Bag provide the everyday woman an affordable and stylish tote fit for everyday tasks or is it simply a stolen style?

 

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