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Chippendales’ Cuffs & Collar Male Stripper Mark Is Not Inherently Distinctive

October 1, 2010

The Chippendales Cuffs & Collar trade dress for “adult entertainment services, namely exotic dancing for women,” is not inherently distinctive because it is a mere variant or refinement of the Playboy mark, which includes cuffs and collar together with bunny ears and was widely used for almost 20 years before Chippendales’ first use, the U.S. Court of Appeals for the Federal Circuit ruled Oct. 1 (In re Chippendales USA Inc., Fed. Cir., No. 2009-1370, 10/1/10).

The court first disagreed with the Trademark Trial and Appeal Board’s suggestion that no costume in the context of the live adult entertainment industry can enjoy the status of an inherently distinctive mark, saying each trademark “must be evaluated individually” under the test set forth in Seabrook Foods Inc. v. Bar-Well Foods Ltd.. However, in affirming the TTAB’s refusal to register this mark as inherently distinctive, the court agreed that the Cuffs and Collar trade dress is a mere variant or refinement of the pervasive Playboy bunny suit that had been in use for many years.

Chippendales’ Mark: Exotic Male Dancing for Women.

In this case, Chippendales, which opened its first strip club in Los Angeles in 1978, a year later had its male performers wear an abbreviated tuxedo—wrist cuffs and a bowtie collar without a shirt—as part of their act. This costume, referred to as the “Cuffs & Collar,” has been featured prominently in Chippendales’ advertising and performances over the past several decades. Chippendales filed an application to register the Cuffs & Collar trade dress in 2000, and three years later received from the Patent and Trademark Office a registration (No. 2,694,613) for the Cuffs & Collar mark for “adult entertainment services, namely exotic dancing for women.” The ’613 mark became incontestable in 2008 under 15 U.S.C. § 1065.

In 2005, Chippendales filed a second application (Serial No. 78/666,598), this time seeking to register the Cuffs & Collar mark as inherently distinctive for “adult entertainment services, namely exotic dancing for women,” in the nature of live performances. Chippendales claimed that it was entitled to a registration on the ground that the mark was inherently distinctive, even though it had secured a registration under Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f).

However, the examining attorney issued a final office action refusing to register the Cuffs & Collar as inherently distinctive.

The Trademark Trial and Appeal Board affirmed that decision, relying on Seabrook Foods Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342 (C.C.P.A. 1977). The TTAB reasoned that this mark is not inherently distinctive because it, or a variation of it, particularly the Playboy bunny suit, had long been in use.

Chippendales appealed.

Request for Inherently Distinctive Registration Not Moot.

The Federal Circuit began by observing that trademarks are assessed on a scale formulated in Abercrombie & Fitch Co. v. Hunting World Inc., 537 F.2d 4 (2d Cir. 1976), which evaluates whether word marks are “arbitrary” or “fanciful,” “suggestive,” “descriptive,” or “generic.” Marks that “arbitrary,” “fanciful,” or “suggestive” are inherently distinctive.

“Inherent distinctiveness does not depend on a showing that consumers actually identify the particular mark with the particular business; this is a question of acquired distinctiveness, or secondary meaning,” the Federal Circuit wrote. Thus, if the mark is inherently distinctive, it is presumed that consumers will view it as a source identifier. Marks that are “descriptive” and acquire secondary meaning may also qualify for protection under Section 2(f), but “generic” marks generally do not qualify for trademark protection at all.

Further, the court pointed out that “trade dress,” which encompasses the design and appearance of the product and its packaging, has been recognized in Supreme Court authority as being capable of inherent distinctiveness. Two Pesos Inc. v. Taco Cabana Inc., 505 U.S. 763 (1992). The Cuffs and Collar mark worn by Chippendales dancers constitutes “trade dress” because it is part of the “packaging” of the product, which is “[a]dult entertainment services, namely exotic dancing for women,” the court said, pointing to the ’598 application.

Judge Timothy B. Dyk then noted that “all registrations for marks in the Principal Register, regardless of whether the mark has acquired or inherent distinctiveness, are accorded the same benefits and evidentiary presumptions under 15 U.S.C. § 1057(b).” He said that once a mark achieves incontestable status under 15 U.S.C. § 1065, it is entitled to the benefits of section 1115(b), which precludes all but a limited number of challenges to a mark’s validity or enforceability. However, he acknowledged that “there may be differences in the context of enforcement” as each federal appeals court applies some test that examines mark “strength” and other factors. “Thus, whether a particular mark is inherently distinctive may affect the scope of protection accorded in an infringement proceeding,” he said.
Accordingly, the court reasoned that the potential benefit of a registration based on inherent distinctiveness in an infringement suit creates “a viable controversy,” and that the grant of a Section 2(f) registration for a mark of acquired distinctiveness did not moot Chippendales’ request here.

Inherent Distinctiveness Measured at Time of Registration.

Though Chippendales then argued that inherent distinctiveness should be measured when the mark is first in use, the court agreed with the PTO’s position that the correct time is at the time of registration. Trademark rights are not static, and it would be “fundamentally unfair” to measure inherent distinctiveness at the time of first use, Dyk said. He explained:

The test for inherent distinctiveness depends on whether the mark, or a variation thereof, has been in common use in general or in the particular field. A term or device that was once inherently distinctive may lose its distinguishing characteristics over time. … It would be unfair for an applicant to delay an application for registration and then benefit from having distinctiveness measured at the time of first use. This would allow an applicant to preempt intervening uses that might have relied on the fact that the registration for the mark as inherently distinctive had not been sought at an earlier time.

All Exotic Dancing Costumes Are Not Alike.

Finally, the court examined the TTAB’s ruling against Chippendales under Seabrook, which considers trade dress inherent distinctiveness based on:

[1] whether it was a “common” basic shape or design,
[2] whether it was [not] unique or unusual in the particular field,
[3] whether it was 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, or
[4] whether it was capable of creating a commercial impression distinct from the accompanying words.

If a mark satisfies any of the first three tests, it is not inherently distinctive, Dyk said, citing McCarthy on Trademarks and Unfair Competition (4th ed. 2008). Further, he said that the fourth factor—whether the trade dress was capable of creating a commercial impression distinct from the accompanying words—is not applicable here.

Dyk found that the TTAB erred in suggesting that any costume in the context of the live adult entertainment industry lacks inherent distinctiveness. The Board seems to lump the Cuffs & Collar together with the well-known examples of a doctor wearing a stethoscope, or a construction worker wearing a utility belt, or a cowboy wearing chaps and a ten-gallon hat, Dyk said, adding:

It is incorrect to suggest that no costume in the context of the live adult entertainment industry could be considered inherently distinctive. Simply because the live adult entertainment industry generally involves “revealing and provocative” costumes does not mean that there cannot be any such costume that is inherently distinctive. Each such trademark must be evaluated individually under the Seabrook factors. The “mere refinement or variation” test is not satisfied by showing that costumes generally are common in the industry.

Cuffs & Collar a Mere Variant or Refinement of Playboy Bunny Suit.

Still, the Federal Circuit agreed with the TTAB’s conclusion that the “mere refinement” prong of Seabrook is satisfied here by the pervasiveness of the Playboy mark, which includes the cuffs and collar together with bunny ears. Dyk stated:

The use of the Playboy mark constitutes substantial evidence supporting the Board’s determination that Chippendales’ Cuffs & Collar mark is not inherently distinctive. The Playboy bunny suit, including cuffs and a collar, was widely used for almost twenty years before Chippendales’ first use of its Cuffs & Collar trade dress. The Cuffs & Collar mark is very similar to the Playboy bunny costume, although the Cuffs & Collar mark includes no bunny ears and includes a bare-chested man instead of a woman in a corset. While the Playboy clubs themselves did not involve exotic dancing, the mark was registered for “operating establishments which feature food, drink and entertainment.” The Cuffs & Collar mark was also worn by waiters and bartenders at Chippendales establishments, which Chippendales argues reinforced the association of the mark with the Chippendales brand. Additionally, the pervasive association between the Playboy brand and adult entertainment at the time of the Board’s decision leads us to conclude that the Board did not err in considering the mark to be within the relevant field of use. Thus, the Playboy registrations constitute substantial evidence supporting the Board’s factual determination that Chippendales’ Cuffs & Collar mark is not inherently distinctive under the Seabrook test.

Panel Bound by Seabrook Test.

Finally, the appellate court turned away Chippendales’ argument that the Federal Circuit should overrule the Seabrook test based on the Supreme Court’s decision in Wal-Mart Stores Inc. v. Samara Brothers Inc., 529 U.S. 205 (2000), which found that product design trade dress can never be inherently distinctive, and can only qualify for protection through acquired distinctiveness. “Nothing in the Wal-Mart decision questioned or undermined the reasoning in Seabrook, Dyk insisted, pointing out that it cited Seabrook but did not express any disagreement with that test to determine the inherent distinctiveness of trade dress. Since Wal-Mart only rejected that inherent distinctiveness test in the context of product design, this “panel is bound by Seabrook, and only the court en banc may overturn it,” Dyk said.

The opinion was joined by Senior Judge Daniel M. Friedman and Judge Kimberly Moore.

Chippendales was represented by Stephen W. Feingold of Kilpatrick Stockton, New York. The Patent and Trademark Office, Alexandria, Va., was represented by Christina J. Hieber, associate solicitor.

Read the In re Chippendales opinion.



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