Give Me a Whiskey and a Handbag to Envy
Leave it to the U.S. Supreme Court to create an elegant intercession between Frank Sinatra's favorite whiskey and one of the world's most coveted handbags. In this article, Alan Behr discusses applications of the Rogers test with focus on the Hermès v. Rothschild and Jack Daniel's Properties v. VIP Products cases.
August 27, 2023 at 12:00 PM
9 minute read
Leave it to the U.S. Supreme Court to create an elegant intercession between Frank Sinatra's favorite whiskey and one of the world's most coveted handbags.
It started when the U.S. Court of Appeals for the Second Circuit ruled in favor of Hermès, the maker of the Birkin handbag, which was introduced in 1984. The Birkin is part tote bag, part purse, part cultural talisman. A new example ranges in price from over $10,000 up to many multiples of that—if you are allowed onto the purchasers' list as a suitable candidate for ownership and are willing potentially to wait several years for delivery. Hermès skillfully bracketed the fame of its bag with twin registrations with the United States Patent and Trademark Office—one for the word mark BIRKIN and the other for the shape of the bag (as trade dress).
In December 2022, Mason Rothschild, an individual self-described as both a marketing strategist and entrepreneur, capitalized on the then-burgeoning market for non-fungible tokens (NFTs) by making and selling one-of-a-kind NFTs of imaginary Birkin bags covered in fur. He created 100 unique digital images, all of which were clearly based on the famous shape of the bag, as his trademark for them, METABIRKINS, made clear. Sales of the collection topped $1.1 million.
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