April 2009 Issue
TTAB Cases
In re Chippendales USA, Inc.,
App. No. 78666598 (TTAB Mar. 25, 2009)
ABSTRACT
The Examining Attorney refused to register the “Cuffs & Collar Mark” for adult entertainment services on the ground that it is not inherently distinctive. The TTAB held that a costume/uniform like the one at issue here is a form of trade dress which may be inherently distinctive for services. In this case, however, the “Cuffs & Collar Mark” was a common shape or design, not unique or unusual in the particular field, and a mere refinement of an existing form of ornamentation for the particular class of services. Accordingly, the TTAB affirmed the refusal to register.
CASE SUMMARY
FACTS
Chippendales USA, Inc. (“Applicant”) filed an application for the “Cuffs & Collar Mark” shown below for “adult entertainment services, namely exotic dancing for women in the nature of live performances” in Class 41. The Cuffs & Collar Mark represents key aspects of the costume that Applicant’s employees have worn since 1979 while performing a “Las Vegas-style dance act.”
Applicant owned an earlier registration for the Cuffs & Collar Mark for essentially the same services, which issued under Section 2(f) based on a claim of acquired distinctiveness. By this recent application, Chippendales sought to register the same mark without the Section 2(f) claim, claiming that the costume trade dress is inherently distinctive.
The Examining Attorney refused registration under Sections 1, 2, and 45 of the Lanham Act on the ground that the mark was not inherently distinctive. Applicant appealed the Examining Attorney’s decision.
On appeal, Applicant argued that the case was “one of first impression,” and it urged the TTAB to adopt a new two-part test to determine whether its trade dress was inherently distinctive:
(1) Is the costume used in such a channel of trade where consumers are conditioned through past experiences to presume a source identification function?
(2) Is the costume immediately associated with an iconic larger-than-life character where the costume acts as an intrinsic symbol for the character?
If the answer to either question is yes, Applicant argued, then the costume should be considered inherently distinctive. Only if the TTAB answered both questions in the negative, Applicant argued, should the costume be considered not inherently distinctive.
Applicant also argued that the Cuffs & Collar Mark is a uniform rather than a costume, that the Cuffs & Collar Mark is highly unusual due to the separation of the cuffs and collar from the shirt or garment to which they would normally be attached, and, finally, that the Cuffs & Collar Mark had never been used before for exotic adult entertainment services targeted to female audiences.
The Examining Attorney argued that exotic dancers commonly perform in various styles of exotic dress, and included examples of such costumes in the record.ANALYSIS
The TTAB commenced its analysis by acknowledging the difficulties in evaluating whether Applicant’s mark is or was ever inherently distinctive. Applicant’s first application to register its Cuffs & Collar Mark was filed in 2000, more than twenty years after Applicant commenced use of the mark, and Applicant’s claim of acquired distinctiveness had been found sufficient to support registration. By the time the current application was filed, Applicant had been using and promoting the mark for nearly 30 years. As a result, Applicant’s use, promotion, and enforcement of the mark had certainly affected the relevant consumers’ perception of the mark, making it extremely difficult to judge how the relevant consumers would have perceived the mark when Applicant first commenced use.
Turning to the merits, the TTAB rejected Applicant’s proposed new test for determining the inherent distinctiveness of trade dress, stating that it must follow the precedent set forth in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342 (CCPA 1977), namely:
(1) Whether the mark is a common shape or design;
(2) Whether the mark is unique or unusual in the particular field;
(3) Whether the mark is a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods or services viewed by the public as a dress or ornamentation for the goods or services; or
(4) Whether the mark is capable of creating a commercial impression distinct from any accompanying words.
The TTAB also recognized that subsequent trade dress cases, notably the Supreme Court’s opinions in Wal-Mart Stores v. Samara Bros., 529 U.S. 205 (2000), Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159 (1995), and Two Pesos Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992), “complement” the Seabrook test, and provide additional guidance. Under these cases, the TTAB held as a threshold matter that the mark at issue here is “a form of trade dress which may be inherently distinctive.” Whether or not the Cuffs & Collar Mark is inherently distinctive was then analyzed under Seabrook.
Applying the first Seabrook factor, the TTAB rejected as “inconsequential” Applicant’s contention that the Cuffs & Collar Mark was a uniform, rather than a costume, and that uniforms are generally inherently distinctive since they are more likely to be perceived as source indicators. The TTAB found that the Cuffs & Collar Mark was a common shape or design, because it was the general type of revealing, provocative costumes or uniforms used in the adult entertainment industry.
Under the second Seabrook factor, the TTAB held that the Cuffs & Collar Mark was not unique or unusual in the particular field at the time of its inception. Similar to the “common shape or design” discussion, the TTAB noted that the Cuffs & Collar Mark is a simple variation on typical revealing and provocative costumes used in the field of exotic dancing. The TTAB also noted that Applicant’s own expert report referenced an article discussing the Cuffs & Collar Mark and “the [Playboy] bunny suit which inspired them,” suggesting that the Cuffs & Collar Mark was not a new or unique variation on the typical costume even at its inception. The TTAB stated that even if Applicant was the first and only party in the adult entertainment field to use the cuffs and collar uniform, that fact alone would not be sufficient to render the mark inherently distinctive.
By the same reasoning, the TTAB found that the Cuffs & Collar Mark was a mere refinement of an existing form of ornamentation for the particular class of services under the third Seabrook factor. Thus, the TTAB held that the Examining Attorney established a prima facie case that the Cuffs & Collar Mark is not inherently distinctive, and Applicant’s evidence was insufficient to counter that conclusion.
As a final matter, the TTAB addressed the substantial amount of evidence that Applicant submitted in support of its argument that the Cuffs & Collar Mark was inherently distinctive. Applicant submitted a report by an expert in the dramaturgy field. While noting the credentials of Applicant’s expert, the TTAB concluded that since she was not an expert in trademark law and did not conduct any empirical research, her analysis ultimately had little probative value. Her report, as well as Applicant’s evidence, served only to support the conclusion that the Cuffs & Collar Mark acquired distinctiveness rather than being inherently distinctive when it was first introduced.
In his dissent, Judge Bucher contested the Board’s finding that the PTO had met its burden of demonstrating that the Cuffs & Collar Mark was a mere refinement of an existing form of ornamentation. Judge Bucher sided with Applicant in finding that the Cuffs & Collar Mark was inherently distinctive trade dress at its inception as an original creation and an immediately recognizable source indicator for Applicant.CONCLUSION
This decision holds that costumes/uniforms are a form of trade dress that may be inherently distinctive for services. It also reaffirms the viability of the Seabrook test for evaluating the inherent distinctiveness of trade dress marks.
