Case Information
*2 Before D YK , F RIEDMAN , and M OORE , Circuit Judges .
D YK , Circuit Judge .
Appellant Chippendales USA, Inc. (“Chippendales”), appeals a decision of the Trademark Trial and Appeal Board (“the Board”). The Board affirmed the examining attorney’s refusal to register the “Cuffs & Collar Mark” as inherently distinctive. We affirm.
B ACKGROUND
The applicant, Chippendales, is in the business of providing adult entertainment services for women. It 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. This costume, referred to as the “Cuffs & Collar,” was featured prominently in Chippen- dales’ advertising and performances over the past several decades. It is set forth below:
In November 2000, Chippendales filed an application to register the Cuffs & Collar trade dress. In 2003, the United States Patent and Trademark office (“PTO”) issued Registration No. 2,694,613 for the Cuffs & Collar for “adult entertainment services, namely exotic dancing for women.” U.S. Trademark Registration No. 2,694,613 (the “’613 mark”). A mark that is inherently distinctive qualifies for registration under the Lanham Trademark Act (“Lanham Act”). See Pub. L. No. 79-489, 60 Stat. 427 (1946) (codified at 15 U.S.C. § 1051 et seq. ). A mark can also qualify for trademark protection under Section 2(f) of the Lanham Act if the mark has become distinctive through use in connection with the applicant’s goods in commerce, known as acquired distinctiveness. See 15 U.S.C. § 1052(f) (“Section 2(f)”).
Although Chippendales submitted evidence both of “inherent” distinctiveness and, alternatively, “acquired” distinctiveness under Section 2(f) of the Lanham Act, the examining attorney in 2003 concluded that the applicant was only entitled to a registration based on acquired distinctiveness. Because of the existing procedure at the PTO at the time of the decision, Chippendales could not contest the basis of the examining attorney’s decision. The sole option at that time would have been for Chip- pendales to request that the registration be cancelled and that the mark be remanded for reconsideration. Chip- pendales was about to commence an infringement action based on the registration and thus opted not to initiate the cancellation of its registration under Section 2(f). The ’613 mark became incontestable in 2008 under 15 U.S.C. § 1065.
In 2005, Chippendales filed a second application, seeking again 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 inher- ently distinctive, even though it had secured a registra- tion under Section 2(f). In the ordinary course, the PTO bars applicants from registering the same mark for the same goods and services. Trademark Manual of Examining Procedure § 703 [hereinafter TMEP]. How- ever, here Chippendales petitioned for—and was granted—a waiver of that procedure, to resolve “the underlying substantive issue as to whether the proposed mark is inherently distinctive.” J.A. 664.
On September 5, 2007, the examining attorney issued her final Office Action refusing to register the Cuffs & Collar because the mark was not inherently distinctive. The Board affirmed. In re Chippendales USA, Inc. , 90 U.S.P.Q.2d (BNA) 1535, 1537 (T.T.A.B. Mar. 25, 2009). The Board held that it was bound to apply our predeces- sor court’s decision in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd. , 568 F.2d 1342 (C.C.P.A. 1977), to determine inherent distinctiveness.
On the merits, the Board concluded that the mark
was not inherently distinctive under
Seabrook
. As we
discuss below, holds that a mark is not inher-
ently distinctive if it, or a variation thereof, is in common
use.
Alternatively, the Board concluded that the Cuffs & Collar mark was not unique or unusual in the particular field of use because it was inspired by the ubiquitous Playboy bunny suit, which included cuffs, a collar and bowtie, a corset, and a set of bunny ears. Id. at 1546. Finally, the Board concluded that the Cuffs & Collar mark “was a refinement of an existing form of ornamenta- tion for the particular class of services,” based on the same evidence discussed in the treatment of the first two factors. Id. at 1542. The dissent disagreed, concluding that the Cuffs & Collar mark was in fact inherently distinctive. Id. at 1544–45. Chippendales timely appealed, and this court has jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(B).
D ISCUSSION
This court reviews the Board’s legal conclusions de
novo, and the Board’s factual findings for substantial
evidence.
See In re Pacer Tech.
,
I
In order to understand the nature of appellant’s
claim, some background is useful. In general, trademarks
are assessed according to a scale formulated by Judge
Friendly in
Abercrombie & Fitch Co. v. Hunting World,
Inc.
, 537 F.2d 4, 10–11 (2d Cir. 1976), which evaluates
whether word marks are “arbitrary” or “fanciful,”
[2]
“sug-
gestive,”
[3]
“descriptive,”
[4]
or “generic.”
[5]
Word marks that
are arbitrary, fanciful, or suggestive are inherently dis-
tinctive.
See Wal-Mart Stores, Inc. v. Samara Bros., Inc.
,
529 U.S. 205, 210–11 (2000). Descriptive marks that
acquire secondary meaning may also qualify for protec-
tion under Section 2(f), while generic marks generally
cannot qualify for trademark protection at all.
Abercrom-
bie & Fitch
,
Trademark protection may be secured for “trade
dress.” “Trade dress” encompasses the design and ap-
pearance of the product and its packaging, and the Su-
preme Court has held that trade dress can be inherently
distinctive.
See Two Pesos, Inc. v. Taco Cabana, Inc.
, 505
U.S. 763, 775 (1992). Here, the Cuffs & Collars worn by
tive.”
See, e.g.
,
Gift of Learning Found., Inc. v. TGC, Inc.
,
or characteristics of a good or service.”
See Park ‘N Fly,
Inc. v. Dollar Park & Fly, Inc.
, 469 U.S. 189, 194 (1985).
For example, the word “Nu-Enamel” was held to be de-
scriptive of paint enamels.
Armstrong Paint & Varnish
Works v. Nu-Enamel Corp.
,
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.” U.S. Trademark Application Serial No. 78/666,598 (the “’598 Application”).
This court applies a four-part test for determining the inherent distinctiveness of trade dress. This four-part test is set forth in our decision in Seabrook as follows:
[1] whether it was a “common” basic shape or de-
sign, [2] whether it was [not] unique or unusual in
the particular field, [3] whether it was a mere re-
finement of a commonly-adopted and well-known
form of ornamentation for a particular class of
goods viewed by the public as a dress or ornamen-
tation for the goods, or [4] whether it was capable
of creating a commercial impression distinct from
the accompanying words.
,
first three tests, it is not inherently distinctive. id. ; 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 8:13 (4th ed. 2008). The fourth factor, whether the trade dress was capable of creating a commercial impression distinct from the accompanying words, is not applicable here.
Inherent distinctiveness does not depend on a show-
ing that consumers
actually
identify the particular mark
with the particular business; this is a question of acquired
distinctiveness, or secondary meaning. As we elaborated
in
Tone Brothers, Inc. v. Sysco Corp.
, 28 F.3d 1192 (Fed.
Cir. 1994), ultimately “the focus of the [inherent distinct-
iveness] inquiry is whether or not the trade dress is of
such a design that a buyer will immediately rely on it to
differentiate the product from those of competing manu-
facturers; if so, it is inherently distinctive.”
Id.
at 1206
(citing
Paddington Corp. v. Attiki Imps. & Distribs., Inc.
,
II
The first issue we consider on appeal is whether the granting of a Section 2(f) registration for a mark of ac- quired distinctiveness moots the request for an inherent distinctiveness registration. [7] Although the parties are in 851 n.11 (1982))); Tone Bros., Inc. v. Sysco Corp. , 28 F.3d 1192, 1206 (Fed. Cir. 1994) (“We agree with Tone that the district court’s analysis on this question confuses the issues of inherent distinctiveness and secondary meaning. To be inherently distinctive trade dress need not, as the district court implies, have an inherent association with the product, or with the owner of the alleged trade dress.”). Section 2(f) provides:
Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a agreement that it does not, we are nevertheless obligated to consider the issue. See, e.g. , Sosna v. Iowa , 419 U.S. 393, 398 (1975) (“While the parties may be permitted to waive nonjurisdictional defects, they may not by stipula- tion invoke the judicial power of the United States in litigation which does not present an actual ‘case or con- troversy,’ and on the record before us we feel obliged to address the question of mootness before reaching the merits of appellant’s claim.” (citations omitted)). We note that this problem is unlikely to arise in the future, as it appears to have resulted from a procedural defect that has since been remedied by the PTO. We nonetheless agree that there are potential collateral consequences resulting from the form of registration under the Lanham Act and that this presents a viable controversy.
mark used by the applicant which has become dis- tinctive of the applicant’s goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant’s goods in com- merce, proof of substantially exclusive and con- tinuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made.
15 U.S.C. § 1052(f). As the PTO described at oral argument, the new
procedure requires the examining attorney to explicitly notify the applicant as to the basis for his decision, and give the applicant the option to either appeal the underly- ing refusal of inherent distinctiveness, or waive the appeal and accept the section 2(f) registration. Oral Arg. at 38:13–38:43; TMEP § 715.02.
All registrations for marks in the Principal Register, [9] regardless of whether the mark has acquired or inherent distinctiveness, are accorded the same benefits and evi- dentiary presumptions under 15 U.S.C. § 1057(b). [10] Similarly, once a mark has achieved 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, such as fraudulent procurement of the mark or abandonment of its use. See 15 U.S.C. § 1115(b)(1)-(9); see also Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc. , 469 U.S. 189, 196 (1985) (holding that an incontestable mark may not be challenged as merely descriptive).
However, there may be differences in the context of
enforcement. Every court of appeals to consider the
question has adopted a similar multi-factor test for evalu-
ating the likelihood of confusion necessary to establish a
trademark infringement claim,
[11]
and all of those tests
include a factor that inquires into the “strength” of the
asserted mark.
See
4 McCarthy,
supra
, §§ 24:30–24:43;
see, e.g.
,
Polaroid Corp. v. Polarad Elecs. Corp.
, 287 F.2d
492, 495 (2d Cir. 1961).
[12]
A mark’s strength is measured
both by its conceptual strength (distinctiveness) and its
marketplace strength (secondary meaning).
See
2
McCarthy ,
supra
, § 11.83. Thus, whether a particular
mark is inherently distinctive may affect the scope of
protection accorded in an infringement proceeding.
See,
e.g.
,
Tana v. Dantanna’s
, No. 09-15123, 2010 WL
2773447, at *5 (11th Cir. 2010);
Boston Duck Tours, L.P.
v. Super Duck Tours, L.L.C.
, 531 F.3d 1, 16–17 (1st Cir.
2008);
Louis Vuitton Malletier v. Dooney & Bourke, Inc.
,
III
The second question we consider is the appropriate time for measuring the inherent distinctiveness of a mark. The PTO on appeal argues that the correct time for measuring inherent distinctiveness is at the time of registration, whereas appellant argues that the correct point in time is when the mark is first in use.
We agree with the PTO’s argument on appeal that the
proper time for measuring inherent distinctiveness is at
the time of registration. This is in fact the accepted
practice at the PTO.
See, e.g.
, 2 McCarthy,
supra
, § 11.53
(“The Trademark Office will consider the issue of descrip-
tiveness and distinctiveness as existing at the time the
application is examined. If the distinctiveness of the
mark has changed since the original application was filed,
this will be considered.”); TMEP § 1216.01. Our predeces-
sor court has ruled that “the right to register must be
determined on the basis of the factual situation as of the
time when registration is being sought.”
In re Morton-
Norwich Prods., Inc.
Judging inherent distinctiveness at the time of first use would be fundamentally unfair. As we have noted, “[t]rademark rights are not static.” Morton-Norwich , 671 F.2d at 1344; see Thunderbird Prods. , 406 F.2d at 1391– 92 (C.C.P.A. 1969). 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. Thunderbird Prods. , 406 F.2d at 1391–92. It would be unfair for an applicant to delay an application for regis- tration 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.
IV
The final question is whether the PTO erred in hold- ing that the Cuffs & Collar mark is not inherently distinc- tive as of the date of the Board’s decision. In making this determination, the Board appropriately considered evi- dence of the current situation as well as evidence of earlier uses, since earlier uses can shed light on the current situation. We think the Board erred in suggest- ing that any costume in the context of the adult enter- tainment industry would lack inherent distinctiveness, but that the Board did not err in its ultimate conclusion.
The three relevant
Seabrook
factors that the Board
considered are: “whether the . . . [m]ark is a common basic
shape or design,” “whether [it] is [not] unique or unusual
in the particular field,” and “whether [it] is a mere re-
finement 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
services.”
Chippendales
, 90 U.S.P.Q.2d at 1539 (citing
Seabrook
, 568 F.2d at 1344). A finding that any one of
these factors is satisfied may render the mark not inher-
ently distinctive. The first factor essentially
asks whether the trade dress is common generally: for
example, does it employ a basic shape or design such as a
letter or geometric shape?
See Brooks Shoe Mfg. Co., Inc.
v. Suave Shoe Corp.
, 716 F.2d 854, 858 (11th Cir. 1983)
(noting that the trade dress design on sides of shoe could
be characterized as a V, an arrow, or a 7, and that “such a
basic geometric shape generally is not considered inher-
ently distinctive”). The second factor asks whether the
symbol is common in the particular field of use.
See Wiley
v. Am. Greetings Corp.
,
We think the Board erred in applying the
Seabrook
standard to the extent that it suggested that
any
costume
would lack inherent distinctiveness in the context of the
live adult entertainment industry. The Board seems to
lump the Cuffs & Collar together with the 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,”
Chippendales
,
However, the Board did not err in concluding that the Cuffs & Collar mark is not inherently distinctive under the test. The first factor is inapplicable; there has been no showing that the Cuffs & Collar dress is common generally. We need not decide whether the second factor is applicable. The third question is whether the Cuffs & Collar mark constitutes “a mere refinement of a commonly-adopted and well-known form of ornamenta- tion for a particular class of goods.” , 568 F.2d at 1344. That test is satisfied if the Cuffs & Collar mark is a mere variant or refinement of a particular costume. The Board alternatively found the Cuffs & Collar mark not inherently distinctive because of the existence of the pervasive Playboy mark, which includes the cuffs and collar together with bunny ears.
Chippendales argues that it was unfair of the Board to raise the issue of the Playboy bunny costume sua sponte, thus preventing it from having the opportunity to respond. However, the Board did not err in relying on the bunny costume, as it was, in fact, Chippendales’ own expert, Dr. Shteir, who provided the article (as an exhibit accompanying her affidavit) which states that “the collar and cuffs, like the bunny suit which inspired them , has become a trademark recognized, wherever women take their entertainment seriously, as a symbol of professional and classy sexy fun.” J.A. 337 (emphasis added). More- over, this court may take judicial notice of the existence of the Playboy bunny trademarks under Fed. R. Evid. 201(c), as we determine that the registration documents by the PTO are “capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned.” Fed. R. Evid. 201(b)(2); Group One, Ltd. v. Hallmark Cards, Inc. , 407 F.3d 1297, 1306 (Fed. Cir. 2005) (upholding district court’s taking of judicial notice of the fact of a patent’s reinstatement).
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 in- cludes 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 test.
Chippendales argues that, even if the Playboy mark
were common in the industry, there are separate markets
for male adult entertainment and female adult enter-
tainment, and that the relevant field of use is limited to
exotic male dancing for women. Chippendales urges that
the affidavit of its expert, Dr. Shteir, establishes that the
audience for male and female striptease are entirely
different, and that the nature of the experience underly-
ing each are entirely different. We detect no error in the
Board’s approach. The Board considered the affidavit and
ultimately concluded that Dr. Shteir’s affidavit was
unpersuasive.
Chippendales
,
Finally, Chippendales argues that we should overrule
Seabrook
, and that the Supreme Court’s decision in
Wal-
Mart Stores, Inc. v. Samara Brothers, Inc.
, 529 U.S. 205
(2000), is fundamentally at odds with the
Seabrook
test.
Chippendales proposes an alternative test to “better
address” the issue of inherent distinctiveness and replace
the “outdated
Seabrook
test.”
[16]
Br. of Appellant 58. We
note that in
Wal-Mart
, the Court merely held that product
design trade dress can never be inherently distinctive,
and can only qualify for protection through acquired
distinctiveness.
Wal-Mart
,
We conclude that the Board’s determination that the Cuffs & Collar mark was not inherently distinctive is supported by substantial evidence. We have considered tume acts as an intrinsic symbol for the charac- ter?
If the answer to either question is yes, then the costume is inherently distinctive unless the costume is nothing more than a common depiction of a familiar symbol that preexisted the costume. If the answer to both (1) and (2) is no, then the costume is not inherently distinctive.
In re Chippendales , 90 U.S.P.Q.2d at 1538. The Court noted that “[t]he attribution of inherent
distinctiveness to certain categories of word marks and product packaging derives from the fact that the very purpose of attaching a particular word to a product, or encasing it in a distinctive packaging, is most often to identify the source of the product.” Wal-Mart , 529 U.S. at 212. In contrast, product design “almost invariably serves purposes other than source identification.” Id. at 213. Chippendales’ additional arguments for setting aside the Board’s decision, and we find them to be without merit.
AFFIRMED
Notes
[1] Once a mark has been registered and in continu- ous use for five consecutive years subsequent to the date of registration, it becomes “incontestable” under the Trademark Act, thus resulting in additional benefits to the owner. 15 U.S.C. § 1065. The registration for an incontestible mark is treated as “conclusive evidence” of
[2] Examples of “arbitrary” or “fanciful” marks in- clude such trademarks as “Rolls-Royce,” “Aunt Jemima’s,” or “Kodak.” Moseley v. V Secret Catalogue, Inc. , 537 U.S. 418, 429 n.10 (2003). These marks contain “coined, arbitrary or fanciful words or phrases that have been added to rather than withdrawn from the human vocabu- lary by their owners, and have, from the very beginning, been associated in the public mind with a particular product . . . and have created in the public consciousness an impression or symbol of the excellence of the particular product in question.” Id.
[3] A suggestive mark “suggests characteristics of the product or service and require[s] an effort of the imagina- tion by the consumer in order to be understood as descrip-
[6]
See, e.g.
,
Qualitex Co. v. Jacobson Prods. Co., Inc.
,
514 U.S. 159, 163 (1995) (“‘[S]econdary meaning’ is ac-
quired when ‘in the minds of the public, the primary
significance of a product feature . . . is to identify the
source of the product rather than the product itself.’”
(citing
Inwood Labs., Inc. v. Ives Labs., Inc.
,
[9] A descriptive term lacking secondary meaning
may not appear on the Principal Register, but may appear
on the Supplemental Register.
See E.T. Browne Drug Co.
v. Cococare Prods., Inc.
,
[10] Section 1057 provides that a certificate of regis- tration of a mark upon the Principal Register “shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the [registrant’s] ownership of the mark, and of the [registrant’s] exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate.” 15 U.S.C. § 1057(b).
[11] In general, in order to prevail in a trademark in- fringement case, a plaintiff must show that the alleged infringer “use[d] in commerce any reproduction, counter- feit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive .” 15 U.S.C. § 1114(1)(a) (emphasis added).
[12] For example, the Second Circuit applies the influ-
ential “Polaroid test,” which applies an eight-factor bal-
ancing test to determine the likelihood of confusion: (1)
the strength of the trademark
; (2) similarity of the marks;
(3) proximity of the products and their competitiveness
with one another; (4) evidence that the senior user may
“bridge the gap” by developing a product for sale in the
market of the alleged infringer’s product; (5) evidence of
actual consumer confusion; (6) evidence that the imitative
mark was adopted in bad faith; (7) respective quality of
the products; and (8) sophistication of the consumers in
the relevant market.
Starbucks Corp. v. Wolfe’s
Borough Coffee, Inc.
,
[13] We note that the Board erred in stating that
“[t]heoretically, if a mark was inherently distinctive when
applicant began use, it remained so thereafter.”
In re
Chippendales
,
[14] The Playboy bunny service mark was first regis- tered in 1964, and remained in effect until 2004 for “oper- ating establishments which feature food, drink and entertainment.” U.S. Trademark Registration No. 762,884. Playboy has acquired numerous other trade- marks for its bunny suit, including U.S. Trademark Registration No. 3,319,643 (“casino and nightclub ser- vices”) and 3,392,817 (“bar and hotel services; cocktail lounge services”).
[15] Dr. Shteir also argued that the Cuffs & Collar mo- tif would have been seen by audiences as a source identi- fier, and thus is inherently distinctive. J.A. 306–07. We note that this conclusion does not address the factors, but rather is directed to the alternative test that Chippendales proposes to “better address” the issue of inherent distinctiveness. infra , note 16 and accompa- nying text.
[16] Chippendales proposed the following test for de- termining the inherent distinctiveness of trade dress: 1. Is the costume used in a channel of trade where consumers are conditioned through their past experience to presume a source identification function? 2. Is the costume immediately associated with an iconic larger than life character where the cos-