Monday, December 1, 2008

Chippendales Fight Over the Inherent Distinctiveness of Famed “Cuffs & Collars” Uniform

Ron Coleman’s Likelihood of Confusion® beat me to the trademark blog punch with his analysis (link here) of the ex parte appeal filed by Chippendales USA, LLC -- the owner of the intellectual property behind the famed Chippendales dancers -- appealing the USPTO’s final refusal to register its “unique” apparel configuration (pictured below) as a trademark for "adult entertainment services, namely exotic dancing for women in the nature of live performances" on the basis that the trade dress is not inherently distinctive. See In re Chippendales USA, LLC, Serial No. 78666598 (the hearing of which is scheduled for Thursday, as reported by The TTABlog®).

What’s interesting about this pending application being appealed is that Chippendales actually already has one trademark registration on this particular trade dress – U.S. Trademark Registration No. 2,694,613 (for adult entertainment services, namely exotic dancing for women). That application was filed back in November 2000. After the PTO initially refused registration on the basis that the trade dress was not inherently distinctive, Chippendales amended the application to state Section 2(f) acquired distinctiveness as its basis for registration on the Principal Register (along with 400 pages of evidence). The PTO had no problem recognizing that the Chippendales trade dress had acquired distinctiveness.

Then in 2003 (about five months after the above application had registered), Chippendales filed a second application to register the same trade dress – only this time, Chippendales did not want to enter a Section 2(f) claim of acquired distinctiveness. One basis for the PTO’s refusal to register was that the application would result in a duplicate registration; however, Chippendales’ attorney explained that “the objective of this application is to have the Cuffs and Collar mark deemed inherently distinctive and registered on the Principal Register with no Section 2(f) claim.” This particular application was subsequently abandoned (for reasons not entirely clear although it may have had something to do with an untimely appeal) in favor of a third application filed in 2005 (the application which is subject to the aforementioned hearing).

As Coleman states,
TMEP 1301.02(c) provides for registration of a “three-dimensional costume design . . . for entertainment services.” In other words, clothes worn as a costume, not as “apparel” per se, are clearly amenable to protection as a trademark. The question appears to be whether a “configuration” of apparel such as that in the illustration constitutes a “costume” — i.e., whether the concept of using a costume to portray a particular character (Mickey Mouse, the San Diego Chicken) can be extended to a situation where, here, there is a concept, but not an identifiable, personal persona meant to be evoked.
The PTO agrees that the Chippendales “costume” is product packaging (as opposed to a product design), and thus, under Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 215, 54 USPQ2d 1065, 1069 (2000), may be inherently distinctive and registrable on the Principal Register without a showing of acquired distinctiveness. However, the PTO just doesn’t seem to believe that this particular product packaging is distinctive. The PTO focused on the factors set forth in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977) for determining the inherent distinctiveness of configuration marks comprising product packaging:
  1. Whether the applied-for mark is a “common” basic shape or design;
  2. Whether the applied-for mark is unique or unusual in the field in which it is used;
  3. Whether the applied-for mark is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods; and
  4. Whether the applied-for mark is capable of creating a commercial impression distinct from the accompanying words.

Regarding the first factor, the PTO found that there is nothing unique or distinctive about a male dancer wearing cuffs and a bow tie and collar and that it is considered to be one of various ways for strippers and male entertainers to dress. As for the second factor, “The collar and cuffs are but one style of accouterments that are worn during the performance of a dance number or show. . . . This is practically an integral element of live acts, exotic dancing and strip tease performances in the world of entertainment and burlesque.” Regarding the third factor, the PTO noted that “Exotic dancers and striptease performers, particularly in the early days of burlesque, often began their routines in formal evening attire. . . . Though this particular form of dress may have been innovative, it was not source recognizing at the outset.” The fourth factor was inapplicable because no word mark was involved.

The test suggested by Chippendales as an alternative to the Seabrook test with respect to costume source indication is: 1) Is the costume used in a channel of trade where consumers are conditioned through their past experience to presume a source identification function? and 2) Is the costume immediately associated with an iconic larger than life character where the costume acts as an intrinsic symbol for the character?

Because the Chippendales "Cuffs & Collars" outfit has become so famous in connection with Chippendales, one can overlook the issue behind inherent distinctiveness -- namely, was the trade dress inherently distinctive when it was first adopted. The PTO maintains that despite the "iconic" status that Chippendales' trade dress may have presently reached, it did not have such status when the services first took place using the trade dress.


Anonymous said...

Thought I would provide two points of clarification to your discussion of the appeal I am handling on behalf of CHippendales (getting ready now to fly down to DC to prep for the argument).
First, in the original application back in 2000 we argued that the mark was inherently distinctive but in the alternative that it had acquired distinctiveness. The TMEP specifcially instructs the Examiner in such cases to issue a final on the inherent distinctiveness argument and indicate that he would accept the evidence of acquired distinctiveness. This allows the applicant to decide whether to appeal or not. Here the examiner did not give us the option to appeal the denial of inherent distinctiveness but had the mark published (without any notice of it being allowed per 2(f)). So the first time we learned of this situation was when the certificate arrived. Ironically, this was right around the time we had filed a federal law suit against a slot machine called the Chickendales with dancing chickens wearing cuffs and collars.
The Trademark Office told us that our options were to request that the registration be revoked and have the application remanded to the examination division or, if that was not acceptable, to file a new application. So that is why we have the 2(f) already.
2. The second application was abandoned after a rather complicated procedural nightmare where the TTAB reinstated our appeal but subsequently when the examining attorney denied our request for reconsideration she used that as an opportunity to put many new exhibits in the record. That meant we had no opportunity to respond to this record. In lieu of fighting that procedural battle, we filed the application which is finally going to be heard by the Board Thursday.
3. Final observation. Why is it that the Playboy Bunny costume sails by examination as inherently distinctive while the Chippendales does not? Is it possible that there is some inherent gender bias here? Along the same lines, is it coincidence that the court in the Dallas Cowboys case had no trouble finding that a cheerleadeers outfit was inherently distinctive. But the PTO just refuses to consider the idea that this uniform is inherently distinctive.

Any suggestions for the argument welcome!

Ryan Gile said...

Thanks for for your clarifications -- especially, point #2. I knew something out of the ordinary happened that made it easier to just start from scatch.

JoshueTree said...

I may be a bit confused....but if already protected through 2(f), what is the need to have another or a replacement? Does being given protection through inherent distinctiveness have more or better protections than getting it through acquired distinctiveness? I'm sure I'm missing something.

Ryan Gile said...

There is a school of thought that sees a Section 2(f) registration as tantamount to an substantive admission that the mark is still fundamentally “descriptive” of the goods and services--and thus, ultimately prone to attack on the basis that the evidence submitted to show acquired distinctiveness was inadequate. See Aromatique, Inc. v. Gold Seal, 28 F.3d 863, 869, 31 U.S.P.Q.2d 1481 (8th Cir. 1994)(“The submission of evidence under Section 2(f) to show secondary meaning, in either ex parte proceedings (such as an application to register a trademark) or subsequent oppositions, amounts to a concession that the mark sought to be registered is not inherently distinctive.”); Yamaha Int’l Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 1580, 6 U.S.P.Q.2d 1001 (Fed. Cir. 1988) (“[S]eeking registration under Section 2(f) is not unlike an affirmative defense to a showing by the opposer (or a concession by the applicant) that the applicant otherwise is not entitled to a trademark for one of the reasons listed under Section 2(e).”); Westchester Media Co. L.P. v. PRL USA Holdings, Inc., 103 F. Supp. 2d 935 (S.D. Tex. 1999)(a registration issued for goods or services under § 2(f) a concession that the mark is not inherently distinctive).

That’s why some trademark practitioners who file Section 2(f) declarations will add something on the record that the submission of the declaration is not intended to be an admission or concession that the mark is descriptive. See In re E.S. Robbins Corp., 30 U.S.P.Q.2d 1540 (T.T.A.B. 1992) (An amendment to an application that adds an alternative claim of acquired distinctiveness under Section 2(f) is not an admission that a mark lacks inherent distinctiveness, provided the amendment makes it clear that the applicant maintains that the mark is inherently distinctive and benefits of Section 2(f) are claimed “without prejudice.”).

Of course, as I think the Chippendales brief noted somewhere during prosecution, the TMEP does not view a Section 2(f) declaration as a substantive concession, but rather a procedural one. See TMEP 1212.02(b) “Section 2(f) Claim Is, for Procedural Purposes, a Concession that Matter Is Not Inherently Distinctive”:
“For procedural purposes, a claim of distinctiveness under §2(f), whether made in the application as filed or in a subsequent amendment, may be construed as conceding that the matter to which it pertains is not inherently distinctive (and thus not registrable on the Principal Register absent proof of acquired distinctiveness). . . . However, claiming distinctiveness in the alternative is not an admission that the proposed mark is not inherently distinctive. TMEP §1212.02(c).”