Stella McCartney faces trade mark battle over ‘Fur Free Fur’

Stella McCartney, a vegetarian luxury brand, has been using the term ‘Fur Free Fur’ since 2001 for products which are typically made using a blend of sustainable materials such as modacrylic, cotton or polyester, to ‘incorporate the look and feel of fur but without any animal cruelty’. However, the brand have been fighting for the term ‘Fur Free Fur’ for approximately two years now as McCartney’s legal team attempted to register the term as a trade mark in the US Patent and Trade Mark Office. Yet, this was rejected.

An attorney from the US Patent and Trade Mark Office stated that ‘Fur Free Fur’ cannot serve as a trade mark due to it being merely descriptive of a feature of the goods. Trade Mark Law does not protect purely descriptive marks. According to the examining attorney “McCartney intended the connotation of the mark to be easily understood and obvious to the general public so that it would clearly convey the fact that its goods are made of material that resemble the pelt of a mammal but are not in fact made from materials from the skin of a mammal”.

As expected, McCartney’s counsel were unhappy with the decision, so appealed the matter to the Trade Mark Trial and Appeal Board in June 2018. It was argued that the term, ‘Fur Free Fur’, is not a descriptive term and is not describing the brand’s products. It was suggested by McCartney’s counsel that the term “obliquely suggests information about the goods” which essentially only adds additional thought on the part of the consumer.

However, last week, the Trade Mark Trial and Appeal Board’s panel of judges came to a majority decision that ‘Fur Free Fur’ would not be seen to be a mere description of McCartney’s products due to the term ‘Fur’, which comes around in two instances, is likely to have different meanings. The first word of ‘Fur’ would refer to animal fur, implying that the goods contain animal free fur. The second term of ‘Fur’ is likely to refer to imitation fur. Due to the different meanings of ‘Fur’ in the trade mark application, it suggests that the goods are both fur-free and made out of fur at the same time. This concludes that the term is not descriptive.

After two years of opposing this legal battle, Stella McCartney can continue with the application of ‘Fur Free Fur’ becoming a trade mark.