In Re Joanne Slokevage
441 F.3d 957 (2006)
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Rule of Law:
A design feature incorporated into an article of clothing itself constitutes product design trade dress. Under the Supreme Court's holding in Wal-Mart Stores, Inc. v. Samara Bros., Inc., product design can never be inherently distinctive and requires proof of acquired distinctiveness (secondary meaning) to be registered as a trademark.
Facts:
- Joanne Slokevage designed a feature for articles of clothing such as pants, overalls, and skirts.
- The design consists of a V-shaped label with the words 'FLASH DARE!' located on the rear of the garments.
- The design also includes cut-out areas, consisting of a hole and an attached flap with a closure device, on each side of the label.
- This configuration of holes and flaps is incorporated directly into the structure of the clothing.
- Prior to this application, Slokevage had obtained a design patent for the cut-out area design.
- Slokevage had also separately registered the word mark 'FLASH DARE!' on the Principal Register and a design mark for the cut-out area on the Supplemental Register.
Procedural Posture:
- Joanne Slokevage filed an application with the U.S. Patent and Trademark Office (USPTO) to register her clothing configuration as a trademark on the Principal Register.
- A USPTO trademark examiner refused registration, finding the configuration to be product design that was not inherently distinctive.
- Slokevage declined the examiner's offer to submit evidence of acquired distinctiveness or to disclaim the design elements, and the refusal was made final.
- Slokevage appealed the examiner's final decision to the Trademark Trial and Appeal Board (Board).
- The Board affirmed the examiner's decision, finding the mark was product design that could not be inherently distinctive and was not unitary.
- Slokevage's request for reconsideration by the Board was denied.
- Slokevage, as appellant, appealed the Board's decision to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Does a clothing design configuration, consisting of cut-out areas with flaps integrated into a garment alongside a word mark, constitute 'product design' that cannot be inherently distinctive and is therefore unregistrable on the Principal Register without a showing of acquired distinctiveness?
Opinions:
Majority - Lourie, Circuit Judge
Yes, a clothing design configuration incorporated into a garment is product design that cannot be inherently distinctive. Following the Supreme Court's bright-line rule in Wal-Mart, product design is not entitled to trademark protection unless it has acquired distinctiveness. The court first established that the determination of whether trade dress is 'product design' is a question of fact, subject to a 'substantial evidence' standard of review. Citing Wal-Mart, the court reasoned that product design primarily serves to make the product more useful or appealing, rather than to identify its source. Slokevage’s design, featuring holes and flaps, is not merely a symbol placed on the clothing but is an integral part of the clothing's design itself. Even if it were a close case, Wal-Mart directs courts to err on the side of classifying ambiguous trade dress as product design. Furthermore, the court found the mark was not 'unitary' because its components—the words 'FLASH DARE!' and the cut-out design—were separable, as evidenced by Slokevage's prior separate registrations of those elements. Thus, the examiner's requirement to disclaim the unregistrable design component was proper.
Analysis:
This decision reinforces and clarifies the application of the Supreme Court's rule in Wal-Mart that product design can never be inherently distinctive. It establishes that features incorporated into the structure of a product, like clothing, are considered product design, not product packaging, even if they only affect one part of the product. The ruling solidifies the high bar for designers seeking to protect innovative product features via trademark law, pushing them to prove acquired distinctiveness. By classifying the product design determination as a factual finding, the court also gives significant deference to the initial findings of the U.S. Patent and Trademark Office.
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