Monday, December 29, 2008

A “Kool” False Advertising Lawsuit

On December 23, 2008, two companies associated with the famed singing group “Kool & the Gang“ (The Name Vault, LLC and Gang Touring, Inc., together the Plaintiffs) filed a false advertising and unfair competition lawsuit against the Las Vegas Sands Corp., Venetian Casino Resort, LLC and Sennie “Skip” Martin in the U.S. District Court for the District of Nevada. See The Name Vault, LLC et al v. Las Vegas Sands Corp. et al, Case No. 08-cv-01809 (D. Nev. Dec. 23, 2008). A copy of the complaint is available here (courtesy of

The Name Vault is the current owner of the intellectual property belonging to the group “Kool and the Gang” which was first formed in the 1960s by George Brown, Dennis Thomas, Ronald Bell (n/k/a Khalis Bayyan), Robert “Kool” Bell, and the late Claydes Charles Smith and best known for its musical hits “Celebration” “Get Down On It” and “Ladies Night”. Among The Name Vault’s trademark asserts are federal trademark registrations for KOOL AND THE GANG (word mark) and KOOL AND THE GANG (and Design) – both covering entertainment services in the nature of live performances by a musical group and series of musical sound recording. Gang Touring is the operating company that handles the day-to-day operations of the group and uses the The Name Vault’s intellectual property under license. Both companies are owned by the four surviving original founding members (George Brown, Dennis Thomas, Khalis Bayyan, and Robert Bell)

According to the complaint, Martin joined the group in 1987 as a trumpet player and vocalist. Martin served as a trumpet player and vocalist periodically for the group from 1987 to 1995 and again from 2000 until 2007. The complaint notes that Martin has never been the lead singer, lead vocalist, or frontman for the group.

This last fact is critical because according to the complaint, sometime in December 2008, the Venetian began promoting a New Year’s Eve concert appearance by Martin – billing Martin as the “former lead singer of Kool & the Gang.” Specifically, the ad (viewable here) reads:

Immediately following Fergie’s high-energy performance, Grammy Award-winning artist Skip Martin, former lead singer of “Kool & the Gang,” will take the stage at 10:45 p.m. and perform hit songs like “Celebration” and “Ladies Night.”

According to the complaint, Martin never performed “Celebration” or “Ladies Night” with the group. Plaintiffs also became aware that Martin was promoting himself on his website,, as the “lead vocalist” for the group from 1987-1995 and from 2000 to the present.

Plaintiffs sent the Defendants a cease and desist letter on December 11, 2008, warning that Plaintiffs would take legal action if the Defendants did not stop their infringing conduct by December 18, 2008. The Defendants refused to pull the ad, and so Plaintiffs filed suit.

Plaintiffs causes of action are for false advertising under 15 U.S.C. §1125(a) as well as common law false advertising and unfair competition.

Wednesday, December 24, 2008

Verizon Announces $33.2 Million Cybersquatting Default Judgment

Several news sources ( and Dow Jones Newswire) reported on the $33.2 million default judgment obtained by Verizon Communications Inc. against OnLineNIC, Inc. for alleged cybersquatting. See Verizon California Inc. et al v. OnLineNic Inc., Case No. 08-cv-02832 (N.D. Cal.).

Verizon sued OnLineNIC for registering 663 domain names that were “identical to or confusingly similar to Verizon trademarks.” Verizon claimed that the registrations were done in order to steer traffic away from Verizon's sites.

The default judgment awarded Verizon $50,000 per domain name.

Verizon’s counsel associate general counsel Sarah Deutsch was quoted as saying “This case should send a clear message and serve to deter cybersquatters who continue to run businesses for the primary purpose of misleading consumers."

Or maybe it just sends a message that if you are sued, you should take the lawsuit seriously or else face the consequences of a default judgment and, in the cybersquatting context, the strong likelihood of the plaintiff electing to receive statutory damages under 15 U.S.C. § 1117(d) which can range from a minimum of $1000 to a maximum of $100,000 per domain name depending on what the court considers just, which apparently in the Verizon case was $50,000.

Monday, December 22, 2008

Viacom Files UDRP Action to Obtain has a blog post today entitled “The Battle of” (link here) about Viacom’s attempts to obtain (or some would say “hijack”) the domain name from a well-known domainer company. Domainnamewire had a similar story earlier in the month.

The show “Jackass” – showcasing the “don’t-try-this-at-home” stunts of Johnny Knoxville and Steve-O, was broadcast on MTV from 2000 to 2002, and was followed by two theatrical films released in 2002 and 2006. MTV has been using the domain name to advertise and promote the shows and films; however, Viacom – MTV’s parent company – decided that it would much rather have the easier to remember URL, and so decided to file a UDRP arbitration action on December 5th with the World Intellectual Property Organization in an attempt to get the domain name transferred to Viacom.

The only thing standing in Viacom’s way; however, is a significant foe in the domain name world – one with a great deal of resources and willingness to fight a case that will surely be characterized as “reverse domain name hijacking” by Viacom.

The owner of the domain name is Future Media Architects, Inc. (“FMA”), a British Island company owned by a man named Thunayan Khalid Al-Ghanim. FMA reportedly owns thousands of domain names – none of which are apparently for sale (because after all, offering a domain name for sale can be used as evidence of bad faith registration).

FMA has had its share of domain name disputes. One particular case that has captured the interest of the domain name world involves Lufthansa Airlines. On April 17, 2008, FMA lost a UDRP action brought by Lufthansa over the two-letter domain name See Deutsche Lufthansa AG v. Future Media Architects, Inc., Claim Number: FA0802001153492 (decision here).

But the loss did not phase FMA which had already filed its own civil action in federal court seeking declaratory relief to stop any transfer of the domain name to Lufthansa pursuant to 15 U.S.C. § 1114(2)(D)(v) (the “reverse domain name hijacking” provisions of the ACPA) which provide a party with a right to relief against an "overreaching trademark owner" when party’s registration or use of a domain name is not unlawful under the Lanham Act. See Future Media Architects, Inc. v. Deutsche Lufthansa AG, Case No. 08-cv-02801 (S.D.N.Y. Filed March 17, 2008). A copy of the First Amended Complaint can be found here.

As for, the case at first would appear to be clear cut – after all, the domain name registration was first created back in October 1997 – several years before MTV’s “Jackass” was even used as a mark, much less became distinctive. How could FMA have registered the domain name in “bad faith” when Viacom itself did not even have even rights in the name at the time?

However, what’s not clear is if FMA was indeed the party that first created the domain name in 1997 or did it acquire the domain at some later date after 2000 – and thus, the date of registration by FMA could be deemed to be subsequent to the date when Viacom’s Jackass mark did become distinctive.

One interesting nuance to this case is that FMA filed for and received its own federal trademark registration for the mark JACKASS on September 6, 2005 for “Computer services, namely providing search engines for obtaining data on a global computer network.”

Such registration, while doing very little to help FMA argue that it did not have any “bad faith intent” at the time it registered a domain name in 1997, could help fight Viacom's argument that FMA has “no rights or legitimate interests in respect of the disputed domain name” (one of the three factors Viacom must prove in order to obtain an order that the domain name should be transferred).

And should the case end up in federal court like the Lufthansa case, then to the extent that FMA may have acquired the domain name sometime in perhaps 2003 (after all, the trademark registration claims a date of first use of December 15, 2003), the registration could help FMA win in a close battle of the nine ACPA “bad faith” factors because although the registration may have occurred at a time when the mark JACKASS was distinctive, all that FMA needs to show is lack of “bad faith intent” in order to overcome Viacom’s cybersquatting claim.

Then again, if the case goes to federal court, one would expect Viacom to file a counterclaim to cancel the registration on the basis of fraud by challenging whether FMA really ever used the mark JACKASS as a source identifier for such services.

Friday, December 19, 2008

VISA wins again against eVISA on trademark dilution claim under TDRA standard

The third time will hopefully be a charm for Visa International Service Association (“Visa”), owner of the famed VISA mark, in its long running trademark dispute with JSL Corporation (“JSL”) over JSL's use of the mark eVISA.

On December 16, 2008, the U.S. District Court for the District of Nevada decided once again on summary judgment that JSL’s use of the eVISA mark was likely to cause dilution against the famed VISA mark. See Visa International Service Association v. JSL Corporation, Case No. 01-CV-00294, 2008 U.S. Dist. LEXIS 101399 (D. Nev. December 16, 2008).

The case has actually been decided in Visa's favor twice already -- both times on summary judgment. On October 22, 2002, the district court granted partial summary judgment in favor of Visa on its trademark dilution claim, finding that Visa had shown as a matter of law that JSL use of the EVISA mark likely diluted the VISA mark. On appeal by JSL, the Ninth Circuit on January 16, 2004 remanded the case back to the district court in order for the court to consider the impact of the U.S. Supreme Court’s decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003), which held that to prevail on a dilution claim under the dilution law at the time (the Federal Trademark Dilution Act ("FTDA")), a plaintiff must establish actual dilution rather than a likelihood of dilution.

After the Ninth Circuit's remand, the Trademark Dilution Revision Act of 2006 ("TDRA") was subsequent signed into law on October 6, 2006. On remand, the district court applied the FTDA and again granted summary judgment to Visa on its trademark dilution claim on December 27, 2007. The court, following the Ninth Circuit’s instructions set forth in Jada Toys, Inc. v. Mattel, Inc., 496 F.3d 974 (9th Cir. 2007), applied the old dilution law rather than the new law because Visa had filed the lawsuit in 2001 before the FTDA was enacted. On February 1, 2008, Visa filed a motion for relief from a final judgment based on this court's "mistake" in applying the FTDA rather than the TDRA.

Before the district court could decide the motion, the Ninth Circuit, on February 21, 2008, amended the Jada Toys decision (previously blogged here) to apply the TDRA to a trademark dilution claim even though the plaintiff filed suit before the TDRA's enactment. See Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008). The district court then informed the Ninth Circuit that it wished to entertain Visa’s motion for relief from a final judgment in light of the Ninth Circuit's amended Jada Toys decision and the Ninth Circuit remanded the case to allow this court to consider Plaintiff's motion for relief from a final judgment.

In the end, the court granted Visa’s motion for relief from a final judgment although it did so under Fed. R. Civ. P. 60(b)(5) (a party can challenge a final judgment if “it is based on an earlier judgment that has been reversed or vacated” or “applying it prospectively is no longer equitable”) instead of under Rule 60(b)(6) (for any other reason justifying relief from the operation of the judgment) which was the basis cited by Visa in its motion.

Visa tried to get the court to apply the law of the case doctrine and simply accept the court’s earlier decision to grant summary judgment after finding "likely dilution" under the pre-Moseley standard; however, the court recognized that the law of the case doctrine has an exception where there is “an intervening change in the law” and proceeded to analyze the facts again under each part of the TDRA to determine if there was any element which may be appropriate for applying the law of the case doctrine

The court did not apply law of case to the fact of fame, but found once again under the TDRA that the VISA mark is famous. As for the TDRA’s requirement that a mark be distinctive, the court accepted its prior order finding the VISA mark to be arbitrary when used in connection with the goods and services provided by Visa. Regarding JSL’s use of the VISA mark in commerce, the court concluded that it had used a mark that was nearly identical to the protected mark – the same mark except for the JSL's addition of a letter 'e' as a prefix, which is commonly used to denote the online version of a business.

The court applied law of the case to the factor of JSL’s use after the mark became famous because the element is identical to the FTDA. Finally, the court applied the six nonexclusive factors set forth in 15 U.S.C. § 1125(c)(2)(B) that a court may consider in determining whether a trademark is likely to cause dilution by blurring and found that Visa had made an “exceptionally strong showing” on four of the six factors. The court concluded as a matter of law that JSL’s use of the EVISA mark is likely to cause dilution by blurring of Plaintiff's VISA mark, and amended its December 27, 2007 order accordingly.

Finally, the court, applying law of the case, granted the same injunctive relief that it previously ordered – namely enjoining JSL from using or registering the EVISA mark and from using the domain name.

Wednesday, December 17, 2008

Black Sabbath Co-Founder Files Trademark Infringement Lawsuit Against Live Nation Over Sales of Unlicensed “Black Sabbath” Merchandise

Bloomberg reports on the trademark infringement lawsuit filed by Anthony Iommi, co-founder and lead guitarist of the famed heavy metal band Black Sabbath, and Bluefame Ltd., the U.K. corporation that represents Iommi in his Black Sabbath trademark licensing, against Signatures Networks, Inc. (“Signatures”) and Live Nation, Inc., which purchased Signature in 2007. See Anthony Iommi et al v. Signatures Network Inc. et al, Case No. 1:08-cv-10904 (S.D.N.Y. December 16, 2008). A copy of the complaint can be downloaded here (courtesy of The Trademark Blog).

Iommi is the only remaining original member of the band formed in 1968 in Birmingham, United Kingdom, by Iommi, vocalist John “Ozzy” Osbourne, bassist Terence “Geezer” Butler and drummer Bill Ward. The original members left the band in the 1980s and each member relinquished all of his respective right, title, and interest in and to the Black Sabbath name, which left Iommi as the sole exclusive owner of the Black Sabbath name by 1985.

Bluefame first received a registration for the BLACK SABBATH mark in the United Kingdom in 1999, and subsequently assigned and transferred the registration to Iommi. On October 31, 2000, Iommi received a federal trademark registration from the United States Patent and Trademark Office for the word mark BLACK SABBATH for three classes of goods (phonograph records, compact discs and prerecorded audio tapes featuring music; clothing; and entertainment services, namely, live performances by a rock band).

In 1997, in connection with a Black Sabbath reunion tour, Iommi, through Bluefame, entered into a licensing agreement with Signatures to manufacture, distribute, and sell merchandise bearing the Black Sabbath trademark and Iommi’s image. The original term was through the end of 2000, but the term was extended to June 30, 2006 through three subsequent amendments.

According to the complaint, the parties attempted to negotiate a fourth amendment, but were unable to reach any agreement on extending the license. The negotiations apparently collapsed around the time when Live Nation purchased Signatures for $79 million in cash, stock and repayment of debt.

In April 2008, Iommi sent a letter to Signatures demanding that Signatures cease and desist from manufacturing, selling, and distributing all merchandise bearing the Black Sabbath mark and/or Iommi’s name or likeness. According to the complaint, Signatures has continued to manufacture, distribute, and sell a wide range of merchandise bearing the Black Sabbath trademark and Iommi’s image and likeness.

Iommi’s causes of action are for registered trademark infringement under 15 U.S.C. §1114, false designation of origin under 15 U.S.C. §1125(a), trademark dilution under 15 U.S.C. §1125(c), trademark infringement under New York law (N.Y. GEN. BUS. L. § 360-k), trademark dilution under New York law (N.Y. GEN. BUS. L. § 360-1), common law trademark infringement, and breach of Iommi’s right to privacy under New York law (N.Y. CIV. R. L. §§ 50-51) for the unauthorized use of Iommi’s name, image, and likeness.

Iommi seeks injunctive relief, damages, treble damages, costs, attorneys’ fees, and destruction of all infringing merchandise.

(perfect gift for the holidays)

Monday, December 15, 2008


The lawsuit filed by Hasbro, Inc. against the makers of the widely popular Facebook game SCRABULOUS (previously blogged here and here) has been voluntarily dismissed by Hasbro. See Hasbro, Inc. v. RJ Softwares, Rajat Agarwalla, and Jayant Agarwalla, Case No. 08-cv-6567 (S.D.N.Y. July 23, 2008). News reports on the settlement can be found here, here, and here.

Scrabulous screenshot

As usual, the parties are silent on the terms of settlement, but RJ Softwares issued a press release on its LEXULOUS site (the new name given to the SCRABULOUS game soon after the lawsuit was filed) stating:

RJ Softwares has agreed not to use the term Scrabulous and has made changes to the Lexulous and Wordscraper games (in the U.S. and Canada) to distinguish them from the SCRABBLE crossword game. Based on these modifications Hasbro has agreed to withdraw the litigation filed against RJ Softwares in federal court in New York in July of this year. As modified, the Wordscraper application will continue to be available on Facebook and Lexulous will be available on the website.

Lexulous screenshot

The Wordscraper game is similar to Scrabulous except that players could devise their own scrabble-type board rather than having a board with the “trademark” look of the original Scrabble board (shown above).

Wordscraper screenshot

Wednesday, December 10, 2008

On break until December 17th

I'm taking a brief vacation from blogging about the always entertaining world of trademark law. I expect to return sometime next week.

Meanwhile, enjoy this little bit of nostalgia courtesy of the Los Angeles Intellectual Property Trademark Attorney Blog, which wrote about a trademark and copyright infringement lawsuit by the Bagdasarian Productions, LLC – the company which owns the intellectual property associated with “Alvin and the Chipmunks” – against a company putting out an unlicensed chipmunk “tribute” album by the so-called “Chipper Three.”

The Chipmunks I knew growing up

Friday, December 5, 2008

Eleventh Circuit remands district court decision on attorneys fees for successful defendant

For those following the long running trademark infringement saga between Welding Services, Inc. (“WSI”) and Welding Technologies, inc. (“WTI”), the Eleventh Circuit decided last year that there was no likely confusion between the stylized WSI logo and the stylized WTI logo for welding services and affirmed the district court’s summary judgment in favor of WTI. A summary of the court’s decision can be read at Filewrapper®.

The case went back to the district court where WTI, the successful defendant, renewed its motion for attorney's fees under 15 U.S.C. § 1117(a) as the “prevailing party.” The district court awarded WTI $104,463.71 in fees and costs and WSI appealed.

The Court of Appeals, in an unpublished per curiam opinion, reversed and remanded the case back to the district court on the grounds that the court made a clear error in one of its findings and did not seem to have considered a declaration that was submitted. See Welding Services, Inc. v. Terry Forman, Appeal No. 08-13287 (11th Cir. December 2, 2008) (per curiam).

Since the district court applied the correct legal standard for determining if the case was exceptional, the Court reviewed the district court's award of attorney's fees for an abuse of discretion (i.e., clear error in the court’s findings of facts in its decision).

The district court found that WSI had an improper motive for bringing the infringement claim given that WSI had filed its complaint only after three former WSI employees acquired WTI even though WTI had actually been using the same mark for two years before the lawsuit was filed. The district court also found that WTI attempted to resolve the infringement issue without litigation by "volunteering" to change the allegedly infringing mark in its response to WSI's cease and desist letter. Finally, the district court found WSI’s trademark infringement claims to be “weak” and yet WSI “persisted with expensive, time-consuming litigation in spite of that.” Based on such findings, the district court awarded the fees and costs.

The one basis for clear error cited by the Court of Appeals was the district court’s finding that WTI had “volunteered” to stop using the WTI mark in a response to WSI's cease and desist letter. The actual language of WTI’s response reflected more of a willingness to compromise, but not volunteering to stop using the WTI mark. On remand, the Court directed the district to reconsider that letter and “reassess its conclusion to the extent necessary to correct any misapprehension the court had about the content of the letter.”

The Court also noted that the district court had not commented in its findings about a sworn declaration of a former WSI employee stating that WSI's chief executive officer told him that he intended to “sue WTI out of business.” The Court determined that the district court should make a credibility determination regarding the alleged statement and, if it finds that statement was made, should consider it in deciding whether WSI litigated with an improper motive.

Finally, the Court also directed the district court to, on remand, decide whether WSI’s weak trademark infringement claims was “coupled with evidence of bad faith and improper motive” by WSI, and thus making the case an “exceptional” one in which the prevailing defendant is entitled to attorney's fees. [ed. – in other words, please make it perfectly clear that you applied the legal standard, so that we can simply affirm you next time.]

This case is a nice reminder that with respect to the language in 15 U.S.C. § 1117(a) which states that “The court in exceptional cases may award reasonable attorney fees to the prevailing party,” a “prevailing party” can include a prevailing defendant sued for trademark infringement case. While an “exceptional case” for a prevailing plaintiff is normally characterized by willful or deliberate infringement on the part of the defendant, an “exceptional case” for a prevailing defendant is usually characterized by a plaintiff that brings an “obviously weak” infringement claim along with evidence showing that the plaintiff acted in bad faith and with an improper motive. See Tire Kingdom, Inc. v. Morgan Tire & Auto, Inc., 253 F.3d 1332, 1336 (11th Cir. 2001)

Wednesday, December 3, 2008

Monster Mini-Golf uses eBay to raise money for defense against Monster Cable trademark infringement lawsuit

Techdirt has an interesting article (link here) about a small mini-golf course in Rhode Island that goes by the name Monster Mini Golf that has been embroiled in a trademark infringement lawsuit with Monster Cable Products, Inc. – the company behind “Monster” cables and which is well-known for filing trademark infringement lawsuits against other small companies in the U.S. that use the name “Monster” in connection with any goods or services (although the company apparently has no beefs with the likes of energy drink maker Monster Energy or job hunting website has a link to the court filings in a similar case filed by Monster back in May against a different, California-based mini-golf course also named Monster Mini Golf. See Monster Cable Products v. Monster Mini Golf, et al., Case No. 08-cv-01037 (E.D. Cal.).

The Rhode Island Monster Mini Golf decided to ask the public to contribute to its defense fund via eBay – the link was subsequently taken down as a violation of eBay’s terms of service agreement (for bidding on “no item”), so now the company has put up a new auction for a “coupon” at Monster Mini Golf that serves the same purpose.

The title of the item is “Buy a Monster Mini Golf Coupon, fight Corporate bully!” Here are the “item specifics”:

  • Weirdness : Totally Bizarre
  • Subject Area: Stop bullys now!
  • Year : 2008
  • Type: Sad, Very Sad

There is a lot more in the detailed description of the item, but you can check out the listing for yourself (click here). I think the company at least deserves some credit for its creative thinking.

Of course, how long do you think it will be before Monster files a VeRO Notice of Infringement with eBay against the listing for infringing its MONSTER mark?

[Note: Make sure to read the one comment to this post. Quite lengthy, but very insightful for those interested in the "Monster" cases]

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.