Tag Archives: Costumes and Clothing

Covering your assets.

Originally posted 2013-09-24 16:02:50. Republished by Blog Post Promoter

Over the weekend, all the nerdiest news outlets reported that Volpin Props—a company that makes props and replicas “mostly videogame related,” according to the outfit’s Facebook page, “but anything goes!”)—received a cease-and-desist letter from Couristan, Inc., a rug and carpeting concern… for possibly the nerdiest/coolest reason imaginable (under the circumstances): Volpin had made for two attendees of the recent DragonCon—held at the Atlanta Marriott Marquis, a hotel with a wide variety of some very, very busy carpeting—custom camouflage outfits in the same pattern as one of the busier carpets at the venue. See a terrific photo here  (reproduced below).

This probably would have been fine. That is, making custom carpet-camouflage costumes for a couple of conventioneers likely would not have gotten Volpin on Couristan’s radar. Or maybe it would have garnered Volpin praise from the carpeter. But Volpin didn’t just make the costumes; it reportedly put the fabric up for sale at Spoonflower.com, a site that sells fabrics, wallpapers, decals, gift wrap, etc. And that got Couristan’s attention—and Volpin got a C&D letter.

Volpin Props - carpetBecause of course. And I mean that: Assuming that Couristan holds the copyright to the carpet pattern—and, man, what a pattern it is!—then Volpin can’t sell a fabric with that same pattern, else it infringe on Couristan’s intellectual property rights. And, to Volpin’s credit, the company’s principal—Harrison Krix, himself of Atlanta—has asked (on Facebook, where much of the public commentary has been posted) that people “not send Courtisan [sic] Inc or Marriott any nasty messages concerning this. I’m in complete agreement with their decision.”

(If you have three or four hours free, you might read the nearly 500 comments on Volpin’s Facebook posts about carpet-flage-gate. Then check out photos of all the carpeting at the Atlanta Marriott Marquis.)


I enjoy being a trademark lawyer

John Welch at the TTABlog® has up what even he acknowledges is an “excit[ing]” post, in which he both imagines himself a woman and quotes this lively Trademark Trial and Appeals Board opinion excerpt concerning the resolution of the Chippendale’s dancer-boy trademark appeal I discussed a while back:

The TTAB appeal was a washout

The TTAB appeal was a washout

Judge David Bucher . . . asked “what purpose is served by prosecuting this application in light of applicant’s [incontestable] registration,” particularly in light of the burden it placed on the PTO? “Trademark Examining Attorneys laboring under demanding production requirements cannot afford to be time travelers, and few have advanced degrees in dramaturgy and theatre arts.”

Nonetheless, he found that the subject mark “would appear to be an original creation and an immediately recognizable symbol belonging to applicant alone, and hence, inherently distinctive.”

Judge Bucher accepted [drama iconology expert] Dr. Shteir’s conclusion that “the expectations of the all-female audience to whom the show was originally presented are critical to our decision herein.”

Yay for Judge Bucher!  Unfortunately for Chippendale’s, however, as well as LIKELIHOOD OF CONFUSION®, which opined that the seedy purveyor of undercooked beefcake should (not “would,” Mr. Welch!) win this one, the ellipsis above elides the words, “in a lively dissent.”

See John’s blog for learned analysis of the opinion, as well as thoughtful consideration of the practical lawyering and IP-strategy issues originally addressed in the comments here.

Chippendales shimmies up to the Circuit

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.