LIKELIHOOD OF CONFUSION®

Originally posted 2010-10-03 23:33:41. Republished by Blog Post Promoter

Reuters reports on a high-class trademark story I’ve been following since my own dancing days:

The male erotic dancer company Chippendales stumbled on Friday when an appeals court ruled that it could not trademark [sic] the bow tie and shirt cuffs that the men wear.  The US Court of Appeals for the Federal Circuit said in a ruling which included a sketch of a fit gentleman shown from the waist up wearing only a bow tie and shirt cuffs that the US Patent and Trademark Office was correct in refusing to trademark [sic] the Cuffs and Collar costume.

“A fit gentleman”?  Fit?  Yes, certainly.  But “gentleman“?

Well, “gentleman” has long ceased to mean “gentleman,” after all.  I hear radio actualities where the cop says, “Then the gentleman proceeded to pistol-whip the granny and proceeded down toity-fifth street where he encountered the officers and was apprehended.”

And then, of course, there’s the “gentleman’s club,” inside of which the one thing you are not likely to encounter is, I can only speculate, a gentleman.  There are websites like that too, I hear.

But more on that sort of thing shortly.

Yes, of course this “fit” bloke is a “gentleman”:  Didn’t you read what the story said?  Look what he’s wearing:

Not an inherently distinctive trademark. Not that there's anything wrong with that.

A bow tie!  And detachable collar and French cuffs!  Sure, the collar and cuffs are attached to nothing but air, but still — what could be more gentlemanly than that?

Which is all very well and good… but evidently not enough to constitute protectible  inherent distinctiveness [see below re this correction -- RDC].  Sliding in half a day ahead of me, Patently-O explains why (and provides a link to the opinion, here):

In particular, the Board noted that strippers often wear revealing would-be professional costumes such as a stethoscope, utility belt, or chaps with a ten-gallon hat.  In this case, the Chippendales Cuffs & Collar costume appears directly derived from a Playboy Bunny costume [which also features a bow tie, detachable collar and French cuffs attached to nothing].  Based on these facts, the Board held that the Chippendales outfit failed the test for inherently distinctive trade dress outlined in Seabrook (CCPA 1977).

On appeal, the Federal Circuit first looked to determine whether the costume is part of the product design or only product packaging.  That distinction is legally important because of the Supreme Court ruling in Wal-Mart v. Samara Bros (2000) that product design is never inherently distinctive.  Here, the court held that the costume is product packaging — with the product being “adult entertainment services.” . . .

Here, the Appellate Court rejected the Board’s implicit holding that no costume on an adult entertainer could be inherently distinctive.  However, the Appellate Court agreed with the Board that the Cuffs & Collar costume was a “mere refinement” of the well-known Playboy Bunny costume.  As a result, the Cuffs & Collar costume failed the third Seabrook element and therefore lacks inherent distinctiveness.

Well, if “gentleman” doesn’t mean what it once did, don’t get me started on “adult” . . .

Either way, though, getting aced out by the Bunnies — that’s got to hurt.  I do feel somewhat vindicated by the ruling rejecting the proposition that “no costume on an adult entertainer could be inherently distinctive.”  Because I think I said something like that in my original post on this topic, or the comments to it.

Either way, it appears that the Chippendales boys are going to have to dance their way into the sunset, and the hearts of middle-aged women everywhere, without the coveted circle-R prestige that comes with “inherent distinctiveness.”  Sorry . . . gentlemen.

UPDATE:  Speaking of gentlemen — see Welch at the TTABlog on this story, and the comments here.

Then see the gentlemen below!!

Now that is class!

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!

Hot (if unlike LIKELIHOOD OF CONFUSION® you go for that sort of thing) off the presses — here’s the appellate brief in the Chippendale’s appeal of the Trademark Trial and Appeal Board’s affirmation of In re Chippendales USA, LLC,  in which the PTO refused to register the “apparel configuration” shown at right for “adult” “entertainment” “services,” on the ground that the design is not inherently distinctive.  I first rounded up reaction to the case, and offered my own thoughts, here.  Scroll down to the comments at that post and see what real trademark lawyers — I don’t mean my own bad self — really sound like when they’re mixing it up on esoteric (that’s esoteric, not “exotic”) doctrine.

I haven’t read the new brief, by Stephen Feingold (now at Kilpatrick Stockton) and Michelle Graham, but it does appear that I was onto something perhaps when I wrote, in a comment,

Well, 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.

Chippendales does, in fact, ask the Federal Circuit to declare that not only did the TTAB fail properly to apply the test for inherent distinctiveness set out in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342 (C.C.P.A 1977), but that it probably should be chucked all together:

The repeated failure to utilize the thirty-year-old Seabrook standard in the above inquiry demonstrates that the standard is so elusive when applied to costumes, as a practical matter, that the examiners making this decision often use every possible excuse to avoid the question altogether.  When such determinations are made, they are based on a highly subjective view of the non-traditional mark causing tremendous inconsistency and unpredictability.  Even if the current standard were evenly applied, it is appropriate for this Court to consider the impact of Wal-Mart Stores v. Samara Bros., 529 U.S. 205 (2000) on this issue.

The Supreme Court in Wal-Mart made clear that the focus of the inherent distinctiveness determination should not be the particulars of the design, but rather on the context in which consumers come into contact with the mark.  Wal-Mart, 529 U.S. at 212-13.  The Supreme Court expressly rejected the Seabrook test for evaluating whether product configurations were inherently distinctive noting in part that the test was simply too difficult to apply.  Id. at 213.  While Wal-Mart did not address the usefulness of the Seabrook test for determining whether a particular trade dress was inherently distinctive, this case is a compelling example of just how elusive that test is, at least when applied to non-traditional trade dress.  But even if the test were not elusive, it looks to factors that do not accurately predict when a consumer is predisposed to perceive that a particular designation is an indicator of source.

Heavy stuff — considering.  If you go for that kind of thing.