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Trade Dress Mark for Clothing Was Product Design Requiring Proof of Acquired Distinctiveness

March 21, 2006

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Last Month at the Federal Circuit - April 2006

Judges: Lourie (author), Gajarsa, Linn

In In re Slokevage, No. 05-1389 (Fed. Cir. Mar. 21, 2006), the Federal Circuit affirmed the decision of the PTO Trademark Trial and Appeal Board (“Board”) sustaining the refusal of an examiner to register the trade dress mark submitted by Joanne Slokevage. The Court concluded that substantial evidence supported the Board’s finding that the proposed trade dress mark was product design and therefore required proof of acquired distinctiveness.

Slokevage filed an application to register a mark for certain types of clothing. She described the mark as a configuration that consisted of a label with the words “FLASH DARE!” and cut-out areas located on each side of the label consisting of holes and flaps. The trademark examiner refused registration of the proposed trade dress configuration onthe ground that it was not inherently distinctive, but afforded Slokevage the opportunity to submit evidence of acquired distinctiveness or to disclaim the design elements of the configuration. Slokevage declined, instead arguing that the trade dress was inherently distinctive. The examiner made final his refusal to register the mark on the ground that Slokevage’s proposed trade dress constituted product design, which cannot be inherently distinctive. The examiner also found that the configuration was not “unitary,” for purposes of avoiding the requirement to disclaim the design elements. The Board

The Federal Circuit first held that the question of whether a trade dress mark is product design or not is a factual issue because it is akin to determining whether a trademark is inherently distinctive or whether a mark is descriptive, both of which are questions of fact. The Court explained that such issues are determined based on testimony, surveys, and other evidence.

The Court then agreed with the Board that Slokevage’s trade dress constituted product design and therefore could not be inherently distinctive. The Court explained that in Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000), the Supreme Court determined that product design can never be inherently distinctive and always requires proof of acquired distinctiveness to be protected. The Wal-Mart Court observed that a cocktail shaker shaped like a penguin is product design and also held that clothingdecorated with hearts, flowers, and fruits is product design. The Federal Circuit concluded that those examples demonstrate that product design can consist of design features incorporated into a product. Slokevage argued that her trade dress was not product design because it did not alter the entire product but was more akin to a label being placed on a garment. The Federal Circuit disagreed, finding that her proposed trade dress was not merely a design placed on top of a garment, but a design incorporated into the product itself. Moreover, the Court rejected Slokevage’s argument that product design trade dress must implicate the entire product. The Court noted that the product design in Wal-Mart consisted of certain design features featured on clothing just like Slokevage’s trade dress. Furthermore, the Court concluded that Slokevage’s design served utilitarian and aesthetic functions, rather than a source identifying function, and it was therefore appropriate to require proof of acquired distinctiveness.

The Federal Circuit also noted that the Wal-Mart Court advised that in close cases, courts should err on the side of caution and classify ambiguous trade dress as product design. The Federal Circuit thus agreed with the Board that Slokevage’s proposed trade dress was product design and, therefore, that she must prove acquired distinctiveness in order for her trade dress mark to be registered.

Lastly, the Court held that substantial evidence supported the Board’s finding that Slokevage’s proposed trade dress mark was not unitary, and thus the examiner properly required a disclaimer of the design elements. The Court noted that display of elements in the drawing of the trade dress, the applicant’s earlier registration of the words “FLASH DARE!” on the Principal Register, and the applicant’s design patent on the cut-out area were all evidence that Slokevage’s trade dress was not unitary. The Court thus affirmed the decision of the Board.