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:
- Whether the applied-for mark is a “common” basic shape or design;
- Whether the applied-for mark is unique or unusual in the field in which it is used;
- 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
- 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.