The USPTO’s “DUPE” Dilemma: Sorting Authenticity From Imitation
You may have seen recent headlines that involve USPTO-related trademark applications that have sought to include the word “dupe,” an abbreviated version of the word “duplicate” used to describe lower-cost products that resemble well-known branded items. This creates essential, almost existential, questions connected to the trademark’s fundamental purpose. If verifying that those sought-after, high-fashion products are authentic is a function of the mark, will the addition of “DUPE,” so associated with low-cost alternatives, just add confusion?
Social acceptance of so-called “dupes” as affordable alternatives for frugal consumers poses a difficult challenge to brands looking to enforce their trademark rights, because the appeal of a dupe is in highlighting similarities with the brand name product while disclosing that it comes from a different source. Because producers of dupes do not try to mislead consumers into believing they’re affiliated with the original maker of the product, like traditional counterfeits do, it can be difficult to successfully claim trademark infringement due to a lack of consumer confusion. This puts brands in a tough spot when they cannot rely on other established IP like trade dress, utility or design patent rights for enforcement purposes.
A federal trademark registration provides a quick and easy way to utilize online social media or retailer platform brand enforcement platforms to take down listings that may entice customers away from the brand name products, which is one reason why brands like Lululemon and Aritza are looking to register marks including the word “dupe.” A federal registration also gives a brand additional leverage in enforcement for keyword advertising, which can heavily influence how consumers encounter and engage with products. This strategy, in theory, provides an alternative to expensive litigation where brand owners may need to rely on claims like trademark dilution and unfair competition.
But because the term “dupe,” has become a fixture of digital marketplace language, turning descriptions of imitation into a form of recommendation, critique, or aspiration, it is not immediately clear whether the term can serve the purpose of a trademark: identifying the true commercial source of goods. These theoretical concerns have come to the forefront with the recent pairing of brand names with “DUPE” being submitted for registration. In some cases, the US Patent and Trademark Office (“USPTO”) has claimed that “DUPE” is merely descriptive, which relies on the idea that consumers immediately recognize it as shorthand for an affordable imitation. Depending on how it is used, “DUPE” might call for interpretation: Does it refer to self-referential humor, a stylistic theme, a more accessible product line, or something else entirely? And if the term is used specifically to distinguish the source of goods from those of a well-known brand, how can those brands use them to indicate themselves?
There are also legal limitations and challenges to the strategy of brands registering their own “dupe” marks. Non-U.S. based companies may bypass the USPTO’s use requirement for registration, but they will eventually need to show legitimate use of the registered mark to maintain protection. Further, if they don’t really intend to offer their own goods under the registered mark that includes the word “dupe,” their registration could be challenged on the basis that there was never a bona fide intent to use the mark in commerce.
Nonetheless, the rise in federal trademark applications including the word “dupe” reflects creative efforts to adapt IP enforcement strategies to rapidly evolving consumer trends that can come at a significant cost to brand owners. At a more academic level, this trend invites the question of how a word intended to distinguish can instead be repurposed to identify.
The experienced trademark, copyright, patent and IP litigation attorneys at Renner Otto are happy to address any questions or concerns you may have about protecting your valuable trademark and copyright assets. Contact us to schedule a consultation.
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