Trade Undress or The Times They Are A'Changing

Submitted by patentadmin on Mon, 02/07/2011 - 13:19

The world is changing. Orange juice isn’t just for breakfast anymore and Chippendales dancers are no longer “adult entertainment” just for women. (In Re Chippendales USA, Inc.)

Before we recount the fascinating Chippendales’ saga, a brief lesson in trademark law is in order. Trademarks and service marks may be divided into four classes or categories, based upon their “inherent distinctiveness”: (1) “arbitrary” or “fanciful,” (2) “suggestive,” (3) “descriptive,” and (4) “generic.”

The first category comprises “words or phrases that have been added to rather than withdrawn from the human vocabulary by their owners, and have, from the very beginning, been associated in the public mind with a particular product.”

A suggestive mark “suggests characteristics of the product or service and requires an effort of the imagination by the consumer in order to be understood as descriptive.”

Descriptive marks merely “describe the qualities or characteristics of a good or service.”

Finally, a generic mark is one that “refers to the genus of which the product is a species.”

Word marks that are arbitrary, fanciful or suggestive are inherently distinctive. Descriptive marks that acquire secondary meaning may also qualify for protection, while generic marks generally cannot qualify for trademark protection at all.

“Trade dress” encompasses the design and appearance of the product and its packaging. Trademark protection may be secured for “trade dress” in like manner to word marks.

In order to qualify for registration, a mark must be “distinctive.” If the mark is deemed, by the PTO, to be “inherently distinctive,” nothing further need be proven. If, however, the mark is not so deemed, it may still qualify for registration if it “has become distinctive through use in connection with the applicants’ goods [or services] in commerce.” This is known as “acquired distinctiveness.”

We can now turn to the Chippendale dancers or, more specifically, to their costumes – or lack thereof. In 1979, the Chippendale “performers” began wearing a “costume” – or lack thereof – comprising wrist cuffs and a bowtie collar, but no shirt. Not surprisingly, this costume is known as the “Cuffs & Collar.” In 2000, Chippendales filed an application for federal registration of this trade dress – or undress. At any rate, in 2003 the USPTO issued a registration in respect of “adult entertainment services, namely exotic dancing for women.”

In its application, Chippendales had submitted evidence of both “inherent distinctiveness” and “acquired distinctiveness.” The Trademark Examining Attorney – the position in the Trademark Office akin to Patent Examiner in the Patent Office – concluded that registration was only allowable on the basis of “acquired distinctiveness.” Due to peculiarities of Trademark Office procedure, and also because Chippendales was about to commence an action for trademark infringement based on the newly issued registration, Chippendales chose not to appeal this decision.

Two years later, Chippendales filed a second application, seeking registration of the same “Cuffs & Collar” mark, in respect of the same services. This time Chippendales wanted a registration clearly based on “inherent distinctiveness.” Although not readily apparent, there was a valid, substantive reason for what, superficially, appears nothing more than a quibble over a point of honor. “[W]hether a particular mark is inherently distinctive may affect the scope of protection in an infringement proceeding.” In plain English, a registration based on inherent distinctiveness is stronger than one based on acquired distinctiveness.

Despite the arguments advanced by Chippendales, the Trademark Examining Attorney again found that the “Cuffs & Collar” mark was not inherently distinctive. Chippendales appealed to the Trademark Trial and Appeal Board – the Trademark Office equivalent to the Patent Office Board of Patent Appeals and Interferences – which affirmed the Examining Attorney.

As a preliminary matter, the Board determined that distinctiveness of the mark was to be determined “at the time applicant began use of the mark nearly 30 years ago.” Next – here is where the decision becomes interesting – the Board concluded that the “Cuffs & Collar” mark was a “common basic shape design because it is not unusual for exotic dancers to ‘wear costumes or uniforms which are … revealing or provocative’.” The Board further concluded that the mark was not “unique or unusual in the particular field of use, because costumes generally are common to the field of exotic dancing. All strippers begin their routine with some kind of fantasy outfit.” (We can only applaud the diligence of the Board members who researched this matter.) The Board alternatively found that 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.”

On appeal to the C.A.F.C., Chippendales argued that it was “unfair” of the Board to raise the issue of the Playboy bunny costume. Wrong, said the C.A.F.C., as it was the Chippendales’ own expert who provided, as an exhibit to her affidavit, the article which stated 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.” (emphasis in the original)

Apparently sensing that the “classy, sexy fun” line was not going to carry the day, Chippendales presented its last argument, namely, “even if the Playboy mark were common in the industry, there are separate markets for male adult entertainment and female adult entertainment” and that the relevant field of use of the Chippendales’ mark “is limited to exotic male dancing for women.” Chippendales asserted that the affidavit of its expert – the same expert who introduced the disastrous Playboy exhibit – established “that the audience for male and female striptease are entirely different, and that the nature of the experience underlying each are entirely different.”

Not good enough. The C.A.F.C. held that “the Board was entitled to conclude … that the relevant market was ‘adult entertainment,’ not adult entertainment specifically for women …” This may come as a surprise to the Chippendales dancers who will have to rely on acquired distinctiveness to protect their costumes, if not their virtue.

THE LESSONS TO BE LEARNED: (1) Identification of the relevant market is often a key issue in trademark matters, and (2) apparently ‘don’t ask, don’t tell’ extends beyond the military.

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