Tag Archives: Product Design

Chippendales cuffs-and-collar TM “distinctiveness” claim goes “gently” into that dark night

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:

Chippendales Outfit Denied Trademark Protection

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!!

Trademark attorneys shaken AND stirred over Walther product configuration TM ruling

Who says the Commissioner of Trademarks is “Dr. No”?

To the contrary, some trademark registration applications Only Live Twice — and that’s quite enough.  John Welch, The Man with the Golden Blog, reports on a TTAB ruling that wouldn’t let this remarkable trademark registration die:

Sean Connery with Walther

It's in the way that you use it ...

Rarely does a product configuration mark pass TTAB muster . . . but it just happened in In re Carl Walther GmbH, Serial No. 77096523 (October 26, 2010) [not precedential]. The Board reversed a refusal to register the mark shown below for “firearms; pistols; and air soft guns,” finding that Applicant Walther had established acquired distinctiveness for the product design under Section 2(f). . . .

TTABlog comment: The advertising expenditure figures were not impressive, and specific sales figures (other than for replicas) were not provided. Perhaps Walther has one person to thank for this victory: Bond, James Bond. Or maybe two: add the survey expert.

Well, I’d rather thank Bond.  (In fact, I believe I already have!)  As John notes, here the Board nodded to the survey, mumbled something not too rigorous-sounding about the result being “in line” with what they might be looking for in that sort of thing,  and then scooted along.

Though like 007 John is too discreet among proper company to make like a Walther pistol and deliver his criticisms like a brick through a plate glass window, his post does shoot the Living Daylights out of some of the rationale underlying the decision in In re Carl Walther GmbH.  As John broadly hints the famous gun’s just plain fame is probably what accomplished the mission and got the girl here.   John’s post is not For Your Eyes Only; I encourage you to read it and tell all your friends.  (UPDATE:  Start here for a more typical case involving product configurations.)  Judicial realists such as LIKELIHOOD OF CONFUSION® could conclude that the tribunal essentially saved the applicant from what may have been something less than a Thunderball of an application, in terms of the quality of proof submitted, but took judicial notice of the fact that, heck, “Well, come on, everybody knows that James Bond uses one of these beauties!”

Brosnan with Walther

Others have something to prove.

That sounds like the right result, in an abstract “well, is it a trademark?  does it have secondary meaning or what?” way.  It seems commonsensical.  Trademarks is easy, right?

Yes, real easy.  Go through John’s short analysis of this decision and you’ll see why it reinforces that nagging suspicion some of us have that a disturbing amount of trademark law is ultimately grounded in little more than judicial instinct, not to say whimsy, whether at the trial level or on appeal via a sort of de facto sub silentio de novo review.  (Triple-decker Latin.  Heh.)

Trademark blogger Ron ColemanIt’s bad enough reading Circuit Court opinions in trademark cases where a whole appellate panel is winging it in three-part harmony.  But when the observation that a judge may just be making up trademark jurisprudence as she goes along occurs to LIKELIHOOD OF CONFUSION® during litigation, having gone through doing all those interesting things they teach in law school about how to prove or defend legal claims provides not even a Quantum of Solace!

Now don’t get me wrong.  “Wet” methods are perfectly appropriate for the Free World’s greatest spy. His is a dirty job, and someone’s got to do it.  Of course the end justifies the means!  Besides, for those of us concerned with the legal end of things, James Bond’s foes are bizarre Batman-like super villains whose own supra-national status exempts them entirely from “technicalities” that might bog down saving the world.

But for the system of ordered liberty which Commander Bond’s like is empowered (by Her Majesty, of course, which makes the doctrinal difficulties here a tad easier to digest) to protect, it’s hard to be quite as enthusiastic about an area of law where judges sometimes rule as if they have… yes… a Licence to Kill.