In Re Chippendales Usa, Inc.
96 U.S.P.Q. 2d (BNA) 1681, 2010 U.S. App. LEXIS 20421, 622 F.3d 1346 (2010)
Rule of Law:
Trade dress is not inherently distinctive if it is a mere refinement of a commonly-adopted and well-known form of ornamentation in the relevant field, and the inherent distinctiveness of a mark is assessed at the time of registration, not at the time of first use.
Facts:
- Chippendales USA, Inc. opened its first strip club in Los Angeles in 1978.
- In 1979, Chippendales performers began wearing an abbreviated tuxedo—wrist cuffs and a bowtie collar without a shirt—as part of their act, which became known as the "Cuffs & Collar."
- The "Cuffs & Collar" costume was featured prominently in Chippendales' advertising and performances over several decades.
- The Playboy bunny suit, which included cuffs and a collar, was widely used for almost twenty years before Chippendales' first use of its Cuffs & Collar trade dress.
- Chippendales' own expert provided an article stating that the "collar and cuffs, like the bunny suit which inspired them, has become a trademark recognized... as a symbol of professional and classy sexy fun."
- The Cuffs & Collar mark was also worn by waiters and bartenders at Chippendales establishments.
Procedural Posture:
- In November 2000, Chippendales filed an application with the United States Patent and Trademark Office (PTO) to register the Cuffs & Collar trade dress.
- In 2003, the PTO issued Registration No. 2,694,613 for the Cuffs & Collar for "adult entertainment services," but based solely on acquired distinctiveness under Section 2(f), not inherent distinctiveness.
- In 2005, Chippendales filed a second application, seeking to register the Cuffs & Collar mark specifically as inherently distinctive for the same services.
- Chippendales successfully petitioned for a waiver of the PTO's ordinary procedure barring registration of the same mark for the same goods/services, to resolve the substantive issue of inherent distinctiveness.
- On September 5, 2007, the examining attorney issued a final Office Action refusing to register the Cuffs & Collar mark as inherently distinctive.
- The Trademark Trial and Appeal Board (TTAB) affirmed the examining attorney's refusal, concluding the mark was not inherently distinctive under the Seabrook test.
- Chippendales timely appealed the TTAB's decision to the United States Court of Appeals for the Federal Circuit.
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Issue:
Is the Chippendales' "Cuffs & Collar" trade dress inherently distinctive under the Lanham Act, and is the proper time for measuring inherent distinctiveness at the time of registration rather than first use?
Opinions:
Majority - Dyk
No, the Cuffs & Collar mark is not inherently distinctive, and the proper time for measuring inherent distinctiveness is at the time of registration. The court first clarified that a Section 2(f) registration (based on acquired distinctiveness) does not moot a subsequent request for registration based on inherent distinctiveness, as inherent distinctiveness can provide a stronger scope of protection in infringement proceedings. The court then held that inherent distinctiveness must be measured at the time of registration, not first use, to prevent unfair preemption of intervening uses and to reflect the dynamic nature of trademark rights. Applying the Seabrook four-part test, the court determined that the Cuffs & Collar mark was not inherently distinctive because it was a mere refinement of a commonly-adopted and well-known form of ornamentation. Specifically, the court found substantial evidence that the Cuffs & Collar mark was a mere variant of the pervasive Playboy bunny mark, which included cuffs and a collar and was widely used for nearly two decades before Chippendales' first use. The court rejected Chippendales' argument that the relevant field of use should be limited to male adult entertainment for women, affirming the Board's conclusion that 'adult entertainment' was the appropriate market. Finally, the court confirmed that the Supreme Court's decision in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., which held that product design cannot be inherently distinctive, did not undermine the Seabrook test for trade dress, which concerns product packaging or overall appearance rather than product design.
Analysis:
This case is significant for clarifying two key aspects of trademark law concerning trade dress: the ongoing utility of seeking inherent distinctiveness even when acquired distinctiveness has been established, and the critical juncture at which inherent distinctiveness is assessed. By establishing that distinctiveness is measured at the time of registration, the court provides a clear standard for trademark examiners and applicants, preventing applicants from benefiting from delayed applications or pre-dating intervening uses. It also reinforces the strict application of the Seabrook test for trade dress, demonstrating how widespread existing designs, even from related but not identical industries, can preclude a new mark from being considered inherently distinctive.
