Amid a jury trial over the allegedly infringing MetaBirkins NFTs, Hermès is looking to block a third-party’s trademark application for HERMES DIGITAL TWIN, arguing that it will be damaged if the mark is registered with the U.S. Patent and Trademark Office (“USPTO”). Initiating its opposition proceeding before the USPTO’s Trademark Trial and Appeal Board on January 30, Hermès sets the stage by asserting that it is the owner of U.S. registrations for the “famous” HERMÈS mark, which cover “a variety of goods and services, including without limitation, blank USB flash drive sticks, mouse pads, horological and chronometric instruments, watches and structural parts therefor, chronographs as watches, wristwatches, straps for wristwatches, and cases for watches.”
In addition to the aforementioned registrations, counsel for Hermès (Foley & Lardner’s Robert Weisbein) also points to the pending web3-focused application for registration that it lodged with the USPTO this summer for use of its word mark in connection with “downloadable mobile applications for providing access to virtual, augmented, or mixed reality environment,” “retail store services featuring virtual goods,” “financial services, namely, providing virtual currency for use in connection with virtual goods,” and “authentication, issuance and validation of digital certificates,” among other things.
With such rights and registrations in mind, Hermès maintains that the application that SolidEnergy Systems, LLC filed with the USPTO in January 2022 for HERMES DIGITAL TWIN “for various goods and services in Classes 9 and 42 including, but not limited to, battery chargers, smartphones, smart watches, and tablet computers” in problematic from both a consumer confusion and dilution point of view. Specifically, Hermès states that SolidEnergy Systems’ “use and registration of the identical trademark HERMES, with the descriptive words ‘DIGITAL TWIN,’ for [its] goods and services are likely to create confusion, mistake, and/or deception, in that relevant consumers are likely to believe that [its] goods and services are sponsored, licensed, endorsed, or approved by Hermès, or that [it] is in some manner connected or associated with Hermès.”
The Birkin bag-maker asserts that the potential for confusion is exacerbated by the fact that it “has and continues to design, manufacture, advertise and sell various accessory products for personal electronic devices such as, mobile electronic device cases, battery charging trays and related devices, and watch bands for digital watches,” and in light of its pattern of “collaborat[ing] with strategic partners in multiple industries, technology included.”
Beyond that, Hermès attacks Vermont-based SolidEnergy Systems’ application on the basis that “Digital Twin” “literally means the digital rendition of something that is indistinguishable from its the real-world counterpart,” with Hermès pointing to a Jan. 2023 news article published on CNBC that “characterized ‘DIGITAL TWINS’ as ‘digital representations of physical systems, products or processes that serve as indistinguishable counterparts.’” With such a definition in mind, Hermès asserts that “the dominant element with respect to the consumer impression of applicant’s mark is the prefix ‘HERMES,’ which is identical to [its own] HERMÈS mark.”
The Bottom Line: Hermès claims that SolidEnergy Systems’ mark “so closely resembles [its] previously used and registered HERMÈS mark” that it is likely to confuse consumers and “to dilute or to be likely to cause dilution by blurring of the distinctive quality of the famous mark HERMÈS,” and thus, should be blocked from being registered with the USPTO.
Interestingly, while SolidEnergy Systems’ application has been subject to push back from the USPTO on the basis of likelihood of confusion with an already-registered mark, that registration is not one that belongs to Hermès. Instead, it is for an “HERMES” mark that was registered to Elbit Systems Ltd. in 2007 for use on “unmanned aircraft vehicles; unmanned land vehicles and unmanned water vehicles.”
THE BIGGER PICTURE here – and what makes this opposition particularly noteworthy at this time – is that it comes amid the case that pits Hermès against MetaBirkins NFT-creator Mason Rothschild. Over the course of the parties’ trial, which is currently underway in the U.S. District Court for the Southern District of New York, and in Judge Jed Rakoff’s recently issued order denying the parties’ motions for summary judgment, quite a bit of information has come out about Hermès enduring efforts in the virtual world, including apparent efforts by the company to create digital twins for its world-famous Birkin bags.
For instance, last week, Maximilien Moulin, who is the head of the Innovation Lab at Hermès, testified to the company’s enduring behind-the-scenes efforts on the NFT front, stating that the lab first created a prototype for a digital Birkin bag back in October 2021, which was not released to the public. At the same time, Nicolas Martin, group general counsel for Hermès, also spoke to Hermès’ web3 plans last week, mentioning the company’s potential use of digital twins to aid in the authentication of its sought-after handbags. (We dove into why Hermès’ web3-focused trademark application for registration is likely to foreshadow the use of digital product passports or digital twins that are tied to real-world assets by Hermès right here.)
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