Jason Wu Fails to Register His MISS WU

published on 1 Feb 2013

The Taiwanese-Canadian fashion designer Jason Wu became internationally famous when Michelle Obama, the First Lady of United States, wore his gown in the Inaugural Ball in 2009. Four years later Mrs. Obama again chose to wear a gown created by Jason Wu for the 2013 Inaugural Ball, which further raised the young designer’s growing profile.

Mr. Jason Wu has obtained Taiwan trademark registrations for his name “JASON WU” in classes 3, 9, 14, 18 and 25 and for an owl device in classes 3, 9, 14, 18, 25 and 28.

However, not all of his trademarks were registered smoothly. Mr. Jason Wu attempted to register for “MISS WU” in plain characters in 2011 for classes 18 and 25 with a priority claim to his corresponding U.S. application. The Taiwan Intellectual Property Office (TIPO) rejected the “MISS WU” application on the ground of lack of distinctiveness, both inherently and with secondary meaning. TIPO explained that while “WU” is a conventional Chinese surname, “MISS WU” could refer to any single female with the surname WU.

TIPO’s decision was appealed to the Board of Appeals, and further litigated before the IP Court. The IP Court concurred with the opinions of TIPO and of the Board of Appeals that “MISS WU” is not inherently distinctive and has not acquired trademark distinctiveness due to insufficient evidence of use in the territory of Taiwan.

The “MISS WU” fashion brand has not yet launched in Taiwan. The story of the “MISS WU” trademark application teaches us that the distinctiveness of a trademark is territorial.

For any questions relating to this topic, please contact us at cjchen@tsailee.com.tw