Finnegan client, TBL Licensing LLC, the company behind Timberland footwear, urged the Fourth Circuit to grant its Icon Boot trade dress protection after the Trademark Trial and Appeal Board and a Virginia district court found the footwear was functional and lacked acquired distinctiveness.
TBL said a Virginia federal judge should have considered the Icon Boot’s design rather than analyzing eight individual design features to conclude they are functional. Additionally, they said the judge was wrong not to consider more than a thousand Instagram posts that associated the boot design with Timberland.
Speaking to Law360, Finnegan partner Beth Ferrill said, "We think that this evidence is more powerful even than a survey because it's not artificial. It's organic, it's spontaneous." She added "to ignore an entire category of direct evidence, we believe, is clear error alone" and that many product designs "have a function, if you break them down enough."
Fifty years ago, Abington Shoe Co. released the Icon Boot and within years of its release, Abington renamed its company Timberland after is marquee boot. Beth said the fact that the company has obtained patents is not evidence that the boot is functional, arguing that "there is no patent that claims the entire Icon Boot design as a whole is functional."
"There [are] also no advertisements that claim the icon boot design as a whole is functional," Beth said. "My colleague on the other side points to advertising to talk about waterproofing, for example. Waterproofing is a lot of things. It is not the Icon Boot design; it is the material that the boot is made out of."
Beth urged the three-judge panel hearing the case to examine both the lower court's findings on functionality and secondary meaning. Each are thresholds for trademark registration, but functionality can preclude TBL from ever getting a trademark registration for the Icon Boot because secondary meaning can evolve over time, she said.
"If you decide to affirm on secondary meaning, please still make a decision on functionality," Beth said. "Because if you agree with us on functionality, then that means that TBL can go back to the trademark office at some point. If the district court's decision on functionality stands, [it] stands as a bar to TBL getting the Icon Boot design ever because non-functionality is a prerequisite for a trademark registration."
Read “Timberland Tells 4th Circ. Boots Deserve TM Protection”
