Tackiness not grounds for refusal to register

Otherwise, why would John Welch be reporting this appeal?:

December 4, 2008 – 10 AM: In re Chippendales USA, LLC, Serial No. 78666598 [Refusal to register the apparel configuration shown below for "adult entertainment services, namely exotic dancing for women in the nature of live performances" on the ground that the design is not inherently distinctive].

Frankly we would have relied on tackiness for the refusal if we were the PTO, because when we see this classy outfit we think “Chippendales” every time.  “Inherently distinctive?” I’d say!

Then again, that’s how we worked our way through law school, so we’re biased. (UPDATE: Marty raises an eyebrow — obviously doesn’t remember what LIKELIHOOD OF CONFUSION® himself  used to look like.)

More interesting is the concept of apparel configurations as the subject matter of a trademark.  Indeed, as the applicant’s brief by friend Stephen Feingold (of our former firm Day Pitney — didn’t realize he’d handled my favorite Yiddish IP case!) makes clear, that question is indeed a matter of first impression.

As the brief explains, TMEP 1301.02(c) provides for registration of a “three-dimensional costume design . . . for entertainment services.”  In other words, clothes worn as a costume, not as “apparel” per se, are clearly amenable to protection as a trademark.  The question appears to be whether a “configuration” of apparel such as that in the illustration constitutes a “costume” — i.e., whether the concept of using a costume to protray a particular character (Mickey Mouse, the San Diego Chicken) can be extended to a situation where, here, there is a concept, but not an identifiable, specific persona meant to be evoked.

To prove that it does, Chippendale’s creatively secured the services of Rachel Shteir, the director of DePaul University’s theater school and a leading historian of American burlesque theater.  She testifies that the Chippendale’s costumes are associated with “iconic characters,” larger-than-life, recognized “types” that target audiences have no hesitation identifying. That, Chippendale’s argues, is exactly the case here, and that is why the outfit is inherently distinctive.

We like the argument, though Chippendale’s goes on to suggest that the actual legal ground for registration here should be a more technical one, but applying Shteir’s analysis — namely the enunciation of a new, post-Samara test for inherent distinctiveness of costumes that allows for analysis of the target audience’s receptiveness to recognition of such icons by the use of recognized costumes.

Very nicely tailored!

UPDATE: Ryan Giles takes adds a few stitches.

UPDATE: Oh this item is really threading its way across the IP Blawgosphere!  Rebecca Tushnet:

If the fact that the torso wearing the collar and bow tie is unclothed is not part of the mark, then any man in an outfit with cuffs and a bow tie is copying the Chippendale’s mark. One might respond that lack of confusion will generally avoid infringement, but is that really how we want to think about it?

Ironically I didn’t want to think about hardly any of this!

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Author:Ron Coleman

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8 Responses to “Tackiness not grounds for refusal to register”

  1. J Welch
    December 1, 2008 at 6:09 pm #

    The TMEP is not the law, and so Applicant’s heavy reliance on the TMEP may or may not bear fruit.

    The PTO concedes that the configuration is “packaging” rather than “product” configuration, and therefore that the configuration may be inherently distinctive. However, the PTO argues that, under the Seabrook test, the design is not inherently distinctive.

    Perhaps the Chippendale “uniform” has acquired distinctiveness (at least in Ron’s eyes), but is it inherently distinctive? That is the question.

    JLW

  2. December 2, 2008 at 12:25 am #

    Well, “J,” they are definitely pushing for a new rule of law — not a rejection of previous standards but an elaboration of an existing basic principle, recognizing trademark in costumes but extending it to this concept of iconic imagery.

    My problem is that to escape mere acquired distinctiveness as you suggest they would, it seems, have to show that the “icon” was there before their use of the trademark. After all, the burlesque theater analogy seems to imply a shared cultural recognition of the character being conjured up by the costume.

    Perhaps, therefore, in order to succeed and to demonstrate inherent distinctiveness they need to show something that it is not obvious to me in the record: That the icon they are relying on, the “Chippendale Man,” predates the use in commerce or at least the period during which secondary meaning in the source begins to adhere?

    Yet if they do that, are they opening themselves up to a mere descriptiveness problem, if other users can show either that the imagery is not only allusive to the Chippendale Man but the Male Stripper Man in general, and that this icon began to coalesce culturally within this target audience before secondary meaning was achieved by the applicant? (There does not seem to be a problem here of a challenge by another would-be user, though I did not look hard at the docket.)

    I hope the above is not too ridiculous. It is actually an analytical approach suggested to me by one of the Chippendale boys after the early show tonight, but he’d already done two shifts, so it might not have been his best abstract doctrinal work.

    UPDATE: I think Ryan Giles focuses on this issue on his post.

  3. December 3, 2008 at 10:16 pm #

    Can one of you help me…I’m a confused Trademark student.

    If they already have protection under 2(f) – and I visited the website, they have a section about their trademark policies thats quite impressive…anway, I’m confused as to why a company who already has protection for this particular trademark using acquired distinctiveness (or as I learned it secondary meaning) would attempt to do it again, ever, but especially when it’s a difficult road?

    I am positive I am either forgetting something I already learned and just haven’t studied again….or am missing something completely obvious…any help would be much appreciated.

  4. J Welch
    December 4, 2008 at 2:12 pm #

    Good question, Tim, particularly in light of the fact that the 2(f) registration is now incontestable. Perhaps by obtaining a new registration based on inherent distinctiveness, Chip won’t have to worry about a challenge to its first registration based on fraud — e.g., a claim that its original 2f evidence was, shall we say, dubious. [I am not implying that its evidence was tainted, but just trying to come up with a rationale.]

    As to the term “secondary meaning,” I think that phrase best applies to word marks, since words have “meaning.” The phrase does not fit quite so well for a mark like the Chippendales “costume.” Also, the statute speaks in terms of acquired distinctiveness, not secondary meaning.

    J

  5. December 5, 2008 at 2:38 am #

    Just telling you guys I don’t pay commenters!

    Except compliments, I guess. Thanks for classing up the joint with all your trademark learnin’!

  6. December 5, 2008 at 2:27 am #

    There is a school of thought that sees a Section 2(f) registration as tantamount to an substantive admission that the mark is still fundamentally “descriptive” of the goods and services–and thus, ultimately prone to attack on the basis that the evidence submitted to show acquired distinctiveness was inadequate (similar to John’s thoughts). See Aromatique, Inc. v. Gold Seal, 28 F.3d 863, 869, 31 U.S.P.Q.2d 1481 (8th Cir. 1994)(“The submission of evidence under Section 2(f) to show secondary meaning, in either ex parte proceedings (such as an application to register a trademark) or subsequent oppositions, amounts to a concession that the mark sought to be registered is not inherently distinctive.”); Yamaha Int’l Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 1580, 6 U.S.P.Q.2d 1001 (Fed. Cir. 1988) (“[S]eeking registration under Section 2(f) is not unlike an affirmative defense to a showing by the opposer (or a concession by the applicant) that the applicant otherwise is not entitled to a trademark for one of the reasons listed under Section 2(e).”); Westchester Media Co. L.P. v. PRL USA Holdings, Inc., 103 F. Supp. 2d 935 (S.D. Tex. 1999)(a registration issued for goods or services under sec. 2(f) a concession that the mark is not inherently distinctive).

    That’s why some trademark practitioners who file Section 2(f) declarations will add something on the record that the submission of the declaration is not intended to be an admission or concession that the mark is descriptive. See In re E.S. Robbins Corp., 30 U.S.P.Q.2d 1540 (T.T.A.B. 1992) (An amendment to an application that adds an alternative claim of acquired distinctiveness under Section 2(f) is not an admission that a mark lacks inherent distinctiveness, provided the amendment makes it clear that the applicant maintains that the mark is inherently distinctive and benefits of Section 2(f) are claimed “without prejudice.”).

    Of course, as I think the Chippendales brief noted somewhere during prosecution, the TMEP does not view a Section 2(f) declaration as a substantive concession, but rather a procedural one. See TMEP 1212.02(b) “Section 2(f) Claim Is, for Procedural Purposes, a Concession that Matter Is Not Inherently Distinctive”:
    “For procedural purposes, a claim of distinctiveness under sec. 2(f), whether made in the application as filed or in a subsequent amendment, may be construed as conceding that the matter to which it pertains is not inherently distinctive (and thus not registrable on the Principal Register absent proof of acquired distinctiveness). . . . However, claiming distinctiveness in the alternative is not an admission that the proposed mark is not inherently distinctive. TMEP sec. 1212.02(c).”

  7. Steve Feingold
    December 7, 2008 at 2:11 am #

    Tim, there are actually two answers to your question. First, as I explained at length in the LasVegasTrademarkLawyer blog, with respect to the registration under 2(f) that is now incontestable, we made that argument back in 2001 in the alternative based on the provision in the TMEP that says that in the case where the examiner finds that the mark can proceed to publication under 2(f) but rejects the claim of inherent distinctiveness he should issue a final refusal so that the applicant can decide whether to appeal or accept the 2(f).
    The examiner here failed to do that; something we only realized when the certificate arrived (I’ve since learned that the publication notice never indicates 2(f) on it). Well, at that time we had just commenced an action against a slot machine called Chickendales that had dancing chickens wearing the cuffs and collar. So we were not going to request that the PTO vacate the registration and remand back to examination. We simply refiled — who ever thought it would take this long to get to the appeal?
    Second, and probably more to the question you are asking, several times over the last few years when we have written to an infringer providing goods or services not within the ambit of the recitation, the response has been that the 2(f) notation means that we have no rights outside of that area without proving secondary meaning in a new market place. I strongly disagree with that argument if the infringement is happening in an area of related commerce but when you are dealing with a non-trademark lawyer who is responding because he is friends with the infringer (as often happens when you are going after small companies that just “can’t believe that in America you can stop me from doing that”) being right is just not enough to avoid undue expense.
    PS
    And just for the record, until John raised the theoretical possibility that we were concerned about some type of fraud challenge, I had never even considered that idea. I have had times when I have been asked to consider what to do about a registration that was perhaps subject to a fraud challenge but thankfully never for a client where I filed the application (as I have for each application filed for Chippendales since 2000).

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  1. ReibLaw Blog » Blog Archive » Registrability of Chippendales Bow-Tie and Cuffs? - December 6, 2008

    [...] If Ron Coleman says that he worked his way through Law School as a Chippendales dancer, who am I doubt him. The story (and commentary) continues here. [...]

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