Utah Cupcake Maker Sues Competitor for Trade Dress Infringement

I have a certain affinity for trademark infringement lawsuits relating to cookies and cupcakes (see here and here). So I couldn’t pass up posting about this cupcake dispute – albeit a little dated in the world of blogging.

On May 14, 2010, Mini’s Cupcakes, Inc. (“Mini’s”) filed suit against Defendants LuAnn’s Cupcakes, Inc. (“LuAnn’s”) and Associated Food Stores, Inc. (“AFS”) in the U.S. District Court for the District of Utah. See Mini's Cupcakes v. LuAnn's Cupcakes et al, Case No. 10-cv-00457 (D. Utah). A copy of the complaint is available here (via Courthouse News). Local press coverage of the dispute here and here.

Mini’s claims trade dress rights to the cupcake design pictured above – what the complaint describes as a “distinctive design that features vanilla cake, blue cream cheese frosting, and silver and white gems.” Mini’s refers to this particular cupcake as its "Breakfast at Tiffany's" cupcake.

Mini’s claims that LuAnn's and AFS has copied Mini’s cupcake design with its so-called "Tiffany Jewels" cupcakes (pictured below) and has even approached one of Mini’s retailers in an attempt to sell its cupcakes – specifically stating that it looks like the Breakfast at Tiffany’s cupcake.

The complaint also argues that consumers have been confused between the two cupcakes – citing a blog post on Utah Loves Cupcakes which happened to note “how freakishly alike they [LuAnn’s cupcakes] look to our beloved Mini’s Cupcakes flavor, Breakfast at Tiffany’s?” The same posts includes two comments – one from Leslie Fiet, the owner of Mini’s, stating “When cupcakes are copied it is the highest form of flattery. I only wish they did not look exactly like mine because I have an outlet in Park City, Sugarbuzz, that sells my cupcakes and many people have been confused that those are my cupcakes and they do not taste the same. But oh well…” The owner of LuAnn's then followed up with her own comment stating “I apologize. It was not my intent to make anyone think they were someone else’s cupcakes.”

A cease and desist letter was sent to LuAnn’s on April 20, 2010, to which LuAnn's apparently did not respond. The complaint alleges that LuAnn’s has continued to sell the infringing cupcakes – although I could not find evidence of such cupcakes currently being promoted on the link of LuAnn's website noted in the complaint.

With no federal registration to back up any claim of distinctiveness for her cupcake design, the key issue is whether consumers would recognize Mini’s particular design as distinctive trade dress or whether they would simply see it as ornamental (requiring Mini’s to show that the design has acquired a distinctiveness such that consumers would associate the particular cupcake design with Mini’s). Of course, given the proximity in which these two small cupcake owners compete, it may be easier for Mini’s to show that, in the small world of Park City, Utah, Mini’s cupcake design has acquired a bit of consumer awareness such that consumers do associate that particular design specifically with Mini’s and thus, Mini’s should be allowed to exclude competitors from taking advantage of the goodwill it has been able to acquire with respect to the cupcake design. What do you think?

Jack Binion Loses Appeal Over BINION Trademark Applications

(Binion's Casino in Downtown Las Vegas)

The TTABlog® reports on a precedential decision issued by the Trademark Trial and Appeal Board upholding a decision by the U.S. Patent and Trademark Office to refuse registration of two intent-to-use trademark applications filed by Jack Binion for the marks BINION’S and BINION for “casino and gaming services” and “hotel and bar services.” See In re Jack Binion, Serial Nos. 76590702 and 76590729 (T.T.A.B. December 23, 2009) (precedential).

The PTO Examining Attorney cited two grounds for refusing the register the marks – likelihood of confusion over the existing registered mark BINION'S ROADHOUSE for “restaurant services” and that the mark was primarily merely a surname (for which Binion’s evidence of acquired distinctiveness was lacking).

The fact that Binion already held registrations for the marks JACK BINION’S (both word mark and design mark) for “restaurant services” and JACK BINION design mark for “Casino, hotel, restaurant and bar services” did not carry any weight with the Board on the issue of likelihood of confusion since the applied-for marks did not contain the first name “Jack” and thus were more similar to the registered mark than his existing registrations. The fact that the registered mark was the name of a single restaurant in North Carolina also did little to persuade the Board – given the nationwide scope afforded registered trademarks.

As for the surname refusal, the Board was unconvinced by the evidence put forward by Binion in an attempt to show that he warrants an exception to the surname refusal as a historical person. As for Binion’s claim of acquired distinctiveness, as noted above, the applications were filed based on intent to use.

While a Section 2(f) claim of acquired distinctiveness can be made if the applicant’s use of the same mark in connection with other goods and services has made the mark distinctive of the goods or services in the intent-to-use applications and the acquired distinctiveness will transfer over to the goods and services in the intent-to-use application when use in commerce begins, the Board found that Binion’s existing registered marks for JACK BINION and JACK BINION'S were not the same.

The Board was also not persuaded by the evidence of the publicity of the Binion family as legends in the Las Vegas community (and let’s not forget the infamy as well from the Ted Binion murder trial) – finding instead that it simply reinforced that consumers would recognize Binion as a surname and did not show use of the name as a trademark to an to an extent sufficient to show acquired distinctiveness

If Binion were inclined to appeal this decision, I think the case might be an excellent contender for an appeal by way of an independent district court civil action under 15 U.S.C. § 1071(b)(1) (rather than a traditional appeal to the Federal Circuit) in order to submit new evidence to overcome what might not have been enough evidence to convince the Board of acquired distinctiveness. And since such an action can be brought in the district where Binion resides (see 28 USC 1391(e)(3)), Binion could file the action in the District of Nevada. You think that might give Binion a home town advantage?

Of course, there is still the little issue of the likelihood of confusion rejection – but that’s nothing that can’t be addressed with a consent and coexistence agreement with the owner of Binion’s Roadhouse (along with a little money).

But there is one other not-so-obvious nuance that stands in the way of Binion getting a federal registration on his name in connection with “casino and gaming services” and “hotel and bar services.” The BINION'S casino pictured at the top of this post is not actually owned by Binion, but rather its owned by TLC Casino Enterprises, which acquired the hotel/casino property in January 2008 from MTR Gaming who had purchased the property from Harrah’s in 2004 after Harrah’s bought out Binion’s Horseshoe and its intellectual property, keeping the “Horseshoe” name and the “World Series of Poker.” (For reasons discussed below, it’s not clear if Harrah’s also sold the “Binion’s” name to MTR, which is what most reports state, or if Harrah’s still considers it part of its trademark portfolio and is licensing it.) A recent news story about the closing of the hotel at Binion’s provides some background. This link also provides some historical perspective.

However, Binion’s intent-to-use applications were filed with the PTO on May 6, 2004. Four months later in early September 2004, a Harrah’s subsidiary filed two use-in-commerce trademark registration applications for the mark BINIONS’S (word mark and design mark) for both “Casino and gaming services” and “Hotel, restaurant and bar services” citing a first use date of June 1964 (a reference back to the opening date of Binion’s Horseshoe). Both of these applications are suspended pending the outcome of Binion’s two intent-to-use applications. Even if Binion were to have gotten his applications published for opposition, Harrah’s (or whatever entity currently owns the goodwill associated with the name Binion’s in connection with the downtown Las Vegas property formerly known as Binion’s Horseshoe) surely would have filed oppositions against Binion’s two applications based on its priority.

Binion's Horseshoe Hotel & Casino

Las Vegas Review Journal Sues Companies Over “The Best of Las Vegas”

(...and the award for Best Trademark Law Blog in Las Vegas in 2009 goes to...)

Stephens Media LLC (“Stephens”), the owner of the Las Vegas newspaper The Las Vegas Review Journal, has sued three companies for trademark infringement over the use of the mark “The Best of Las Vegas.” Two of the lawsuits were filed earlier this week and one filed earlier this month. See Stephens Media LLC v. Gault Millau, Inc., Case No. 09-cv-02403 (D. Nev. December 21, 2009) (complaint here); Stephens Media LLC v. US Commerce Association et al, Case No. 09-cv-02405 (D. Nev. December 21, 2009) (complaint here); and Stephens Media LLC v. CitiHealth, L.L.C., Case No. 09-cv-02285 (D. Nev. December 2, 2009) (complaint here).

An article on the lawsuits, written by the Las Vegas Sun (the print version of which is owned by a separate company, but distributed with the Review Journal), can be found here.

Stephens has several federal trademark registrations for both the design mark “The Best of Las Vegas” (pictured above) and the word mark “Best of Las Vegas” including:

• The design mark THE BEST OF LAS VEGAS for “section of a newspaper featuring consumer preferences and recommendations regarding people, places, goods, services, restaurants, entertainment, arts, sports and recreation in the Las Vegas area”;
• The design mark THE BEST OF LAS VEGAS for “Newspaper articles, periodicals and pamphlets featuring general information about people, places, goods, services, restaurants, entertainment, arts, sports and recreation; paper award certificates”;
• The word mark BEST OF LAS VEGAS for “Newspaper articles, periodicals and pamphlets featuring general information about people, places, goods, services, restaurants, entertainment, arts, sports and recreation; paper award certificates”;
• The word mark BEST OF LAS VEGAS for “promoting the sale of goods and services of others by conducting and disseminating business surveys featuring consumer preferences and recommendations regarding people, places, goods, services, restaurants, entertainment, arts, sports and recreation in the Las Vegas area”; and
• The word mark BEST OF LAS VEGAS for “providing a web site featuring business and consumer preferences and recommendations regarding people, places, goods, services, restaurants, entertainment, arts, sports and recreation in the Las Vegas area.

For those of you wondering how Stephens could possibly obtain trademark registrations for such a descriptive mark, the answer lies in Section 2(f) of the Trademark Act which allows a trademark owner to register a descriptive mark on the basis of acquired distinctiveness. All of the above marks are registered on the Principal Register based on a Section 2(f) claim of acquired distinctiveness (in-part for the design marks do have a distinctive design) – and all registrations have disclaimers of the word “Las Vegas.”

According to the complaint against Gault Millau, its travel website gayot.com has a section named “The Best of Las Vegas Top Restaurants Hotels Travel Guide” (click here to see what I could find) that Stephens finds infringing.

As for the complaint against US Commerce Association, the company is allegedly selling “award” plaques ($80 each) or award trophies ($180 each) to small businesses by sending e-mails stating that they have won a “Best of Las Vegas Award” which are bestowed upon such businesses by US Commerce Association. [Comment: kind of like those scam Who’s Who’s directories that will honor you by listing you in their "Who's Who" book – with the payment of a fee which gets you a copy of the book listing the names of thousands of others suckers as well as a pretty piece of paper]. Stephens feels that the company's actions harms the goodwill associatd with its “Best of Las Vegas” marks.

Finally, the lawsuit against CitiHealth relates to the company’s publication of a magazine in December 2008 called “Healthy Living Las Vegas” that included the phrase on the cover “Best of Las Vegas” (the cover picture appeared online as well at http://www.citihealth.com/). Las Vegas Sun reporter Steve Green spoke with the publisher of the Healthy Living, who stated that the company was not aware of Stephens’ trademarks for “Best of Las Vegas” at the time the magazine was published and that after the company received notice from Stephens, the company took action to remove the magazines from circulation and removed it from the website. [So why the lawsuit after all this time? That’s the real question isn’t it?]

Woman Sues Sirius-XM over SUNDAY BAROQUE

The Connecticut Post reports (link here) on the trademark infringement lawsuit filed by an Ohio woman named Suzanne Bona-Hatem against satellite radio company Sirius-XM over the use of the mark SUNDAY BAROQUE for a radio music show featuring guess what kind of music which can be heard on guess what day of the week?

Bona-Hatem’s “Sunday Baroque” show is a four-hour syndicated Sunday morning program which is broadcast to over 90 stations and heard in over 30 states to an audience of 2.7 million people (according to the suit)

In addition, Bona-Hatem was able to procure her a trademark registration for the mark SUNDAY BAROQUE for “Entertainment in the nature of on-going radio programs in the field of Baroque music” from the U.S. Patent and Trademark Office (“PTO”). Of course, it was only after she first disclaimed the descriptive word “Baroque” from her mark. Moreover, anticipating an obvious descriptiveness refusal by the PTO, the application was initially filed with a claim of Section 2(f) acquired distinctiveness on the basis of Bona-Hatem’s claimed exclusive and continuous use in commerce of the mark for at least the five years prior to making the claim of acquired distinctiveness. The PTO did not raise any questions about her Section 2(f) claim or request any additional evidence to prove her acquired distinctiveness claim.

The lawsuit alleges that Sirius-XM is broadcasting a similar baroque show on Sunday – and using a name that is identical to her mark (although one wonders how you might describe a baroque radio show broadcast on Sundays without using some semblance of her mark).

While one wonders why Sirius-XM didn’t just change the name of its show in response to correspondence from Bona-Hatem’s attorney. After all, she cannot really prevent anyone from using the term Baroque in connection with playing Baroque music – and do you really have to use the word Sunday as part of the program title?

Of course, from Sirius-XM’s perspective, while Bona-Hatem may have a trademark registration for SUNDAY BAROQUE, can she really prevent other radio programs from using the words SUNDAY and BAROQUE in their descriptive sense when broadcasting a baroque music radio show on Sunday (i.e., would “Sunday Morning Baroque” or “Baroque on Sunday” be considered by Bona-Hatem confusingly similar?).

So who do you think is in the right here? Is Bona-Hatem’s trademark so ridiculously descriptive that she should not be allowed to claim any exclusive rights to the term SUNDAY BAROQUE in connection with a baroque radio show broadcast on Sunday? Or is Sirius-XM being ridiculous in not taking the simple step of simply renaming the show (is calling the show by the boringly descriptive “Sunday Baroque” so important that its willing to go to court over it)?

SmileyWorld's Franklin Loufrani Suffers Setback in Quest for World Domination of the Smiley Face

I have previously written (here and here) about the efforts by Franklin Loufrani to claim exclusive ownership rights over the famed “smiley face” (although admittedly those posts were primarily focused more on the efforts of Eat ‘N Park Hospitality Group, Inc. to claim exclusive rights to a “smiley face” on a cookie).

Loufrani has been embroiled in several trademark oppositions with Wal-Mart at the Trademark Trial and Appeal Board (“TTAB”) over the “smiley face”. Wal-Mart had opposed two of Loufrani’s applications (here and here) to register his Smiley design mark (pictured above). See Wal-Mart Stores, Inc. v. Franklin Loufrani, Opposition Nos. 91150278 and 91154632. Wal-mart also sought to register its own Smiley logo (pictured below), which Loufrani later opposed. See Loufrani v. Wal-Mart Stores, Inc., Opposition No. 91152145 (Filed July 23, 2002).

As reported by The TTABlog®, the TTAB handed down a decision on March 20, 2009, which sustained Wal-Mart's opposition to Loufrani’s application and dismissed Loufrani's opposition to Wal-Mart's application (an outcome that certainly did not make Loufrani smile). See Wal-Mart Stores, Inc. v. Franklin Loufrani, Oppositions Nos. 91150278, 91154632, and 91152145 (March 20, 2009) (not precedential).

The Board stated that the “smiling face” design is a “ubiquitous, non-inherently distinctive design” and a “common feature of modern American culture.” Nonetheless, the Board found that Wal-Mart had proven that its Smiley had acquired distinctiveness prior to Loufrani's priority date of June 3, 1997 – based on its “truly impressive” amount of money on advertising (including television) before Loufrani’s filing date.

Wal-Mart's Smiley on Display

Moreover, the Board found that consumers viewing Loufrani’s “smiley” would view the mark as ornamental because the word “Smiley” is the commonly used name for the “ubiquitous, non-inherently distinctive” smiley face symbol, and thus concluded that his mark was not inherently distinctive. (Loufrani’s applications were filed based on intent-to-use, so he could not argue acquired distinctiveness as Wal-Mart did).

The Board also found a likelihood of confusion between Wal-Mart’s smiley face and Loufrani’s proposed mark for 17 out of the 23 classes of goods recited Loufrani’s application (not that it mattered since the Board’s finding of non-distinctiveness applied to the entire application).

It will be interesting to see if Loufrani continues his fight given the Board’s opinion about non-distinctiveness.

In addition, given that it took a “truly impressive” amount of money for Wal-Mart to stake a claim on a “ubiquitous, non-inherently distinctive design” that has become a “common feature of modern American culture,” one wonders if Eat ‘N Park can continue to claim exclusive rights to its “smiley” cookies when most (if not all) of Eat ‘N Park’s defendants are merely decorating a cookie with that captures this famed ornamental symbol.

Does anybody out there really think that Eat ‘N Park has the same “impressive” advertising dollars to back up its claim of acquired distinctiveness? As the TTAB stated “Considering that we have already determined that the smiling face is a common feature of modern American culture, [acquired distinctiveness] will not be something easily achieved."

Sidenote:

It is surprisngly difficult to find a good JPEG of Wal-Mart's actual mark that is the subject of its trademark registration application. The above picture was from the PTO's database. But I thought I might share some of the more creative versions of the logo that I found on various websites while looking -- many of which (as you might guess) do not have a favorable opinion of Wal-Mart.

Upper Deck Sues Former Partner Konami Over Hologram

On February 26, 2009, The Upper Deck Company (“Upper Deck”) filed a trademark infringement lawsuit against Konami Marketing, Inc. and Konami Digital Entertainment, Inc. (“Konami”) in the U.S. District Court for the District of Nevada. See The Upper Deck Company v. Konami Marketing, Inc. et al, Case No. 09-cv-00374 (D. Nev.). A copy of the complaint is available here.

Upper Deck, a Nevada corporation, sells various sports trading cards and trading card games. One of Upper Deck’s trading card games is based on the popular Japanese cartoon (“manga”) and anime franchise Yu-Gi-Oh!, owned by Kabushiki Kaisha Shueisha and purportedly licensed for use in the United States by Konami. (Upper Deck’s own webpage on its Yu-Gi-Oh! trading cards even contains a link to Konami’s website in the upper left). Apparently, up until last December, Upper Deck and Konami had an agreement whereby Upper Deck was the exclusive North American distributor of Yu-Gi-Oh! Trading Card Games.

According to the complaint, Upper Deck has used a small square hologram (pictured above) since at least February 2002 to identify certain of its trading card, including Yu-Gi-Oh! trading cards – the logo appears in the bottom right-hand corner of trading cards. Upper Deck claims that the hologram not only serves as a source identifier (and apparently makes the cards more collectible), but also represents its specific, proprietary counterfeit-protection method to distinguish authentic trading cards from counterfeits.

Of course, Upper Deck never bothered to actually register the square hologram as a trademark with the United States Patent and Trademark Office until January 2009. Upper Deck has two applications pending – one for the above square symbol and one for a round symbol. (While Upper Deck has registered many of its hologram shapes in the past, all but one have been canceled – the one current registration being a hologram version of the above shape of the Upper Deck logo – see below). Upper Decks also filed trademark applications for its “SQUARE” with the State of Nevada (here and here), both of which were issued on February 20, 2009. [Ed. –proving once again that you can get anything registered as a trademark at the state level, including a “square”].

Konami apparently terminated the aforementioned distribution agreement with Upper Deck on December 11, 2008. Nonetheless, Konami allegedly is now selling Yu-Gi-Oh! trading cards that contain Upper Deck’s hologram mark (or a confusingly similar type of hologram) without Upper Deck’s consent. Upper Deck argues that Konami’s selling of Yu-Gi-Oh! trading cards with its hologram is likely to cause consumer confusion that Konami’s trading cards are sponsored by, endorsed by, or related to Upper Deck and will cause consumers to erroneously believe that they are purchasing Upper Deck products.

Upper Deck’s causes of action are false designation of origin under 15 U.S.C. §1125(a); trademark infringement under Nevada law (NRS §600.420); deceptive trade practices under Nevada law (NRS §598.0915); and common law trademark infringement and unfair competition.

Vegas™Esq. Comments:
Upper Deck has an uphill battle in trying to show that consumers really identify this hologram as it appears on the Upper Deck cards as a source identifier for Upper Deck’s cards and not recognized more for its functional purposes (i.e., identifying a genuine Yu-Gi-Oh! trading card). While Upper Deck claims that the square hologram is a protectable mark that consumers would recognize and associate with Upper Deck, with respect at least to the Yu-Gi-Oh! trading cards, the hologram clearly shows the words “Yu-Gi-Oh!” (and not Upper Deck). Should Upper Deck be allowed to prevent Konami (or any other company) from using a hologram on trading cards in order to promote its cards as authentic (in a world where counterfeits are rampant)?

Article Spotlights VitaminWater Trade Dress Enforcement

Law.com posted an article (link here) regarding the trade dress enforcement efforts undertaken by Energy Brands, Inc. (d/b/a Glacéau), the company behind the fruit-flavored “enhanced” water VitaminWater which was purchased by Coca-Cola in 2007 for $4.1 billion. The article describes the efforts by the company’s legal team in aggressively going after competitors that try to imitate VitaminWater's bell-shaped water bottles with their two-toned labels (pictured above).

Glacéau is currently seeking to register its VitaminWater bottle with the U.S. Patent and Trademark Office ("PTO"). Glacéau received a registration for the bottle label. However, Glacéau’s application to register the actual bottle design (filed June 24, 2008) has been preliminarily refused by the PTO on the basis that the product packaging is functional and thus incapable of serving as a source identifier and furthermore on the basis that the packaging is not inherently distinctive. The PTO is currently only willing to register the wording and design on the label (which Glacéau already has).

With Coca-Cola’s trademark legal team supporting it, I would expect a significant response to the PTO’s action by Glacéau arguing that its bottle design is not functional and that product packaging is inherently distinctive (or alternatively, Glacéau can prove acquired distinctiveness based on its strong marketing efforts to date – after all, if Coca-Cola was willing to pay $4.1 billion for the company, it must have been doing something right).

Anyone care to make any predictions on whether Glacéau will prevail? One thing I could not have ever predicted – consumers would pay good money for flavored sugar water. Isn't this just bottled Kool-Aid?

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.