Tim, of the JoshueTree blog, asks a great question in the comments to this post:

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

If they already have protection under 2(f) [“acquired distinctiveness‘] – and I visited the website, they have a section about their trademark policies that’s quite impressive…anyway, 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 [seek registration of the mark as inherently distinctive] 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.

A very basic question, yeah?  So read these answers — from some guys who really get it.

UPDATE:  I linked to this elsewhere, I think, but you have to include this latest contribution from Stephen Feingold, too.

By Ron Coleman

I write this blog.

2 thoughts on “Acquiring distinction”
  1. Ron, thank you so much for giving the start-up blog a plug.

    I understand what everyone is saying. And my trademark professor, Justin Hughes, tends to agree. I guess they are setting it up so that any challengers in the next five years (while it’s still contestable) won’t be able to say they admitted to the marks non inherently distinctive status. I think their worries are others would challenge because the “cuffs and collars” is something associated with Chippendales but I imagine is used by others, because it is so popular in the erotic dancing genre (again, this is a guess, but I think a good one). But saying this might actually harm the second prong of the Seabrook analysis, so they can’t. But if they are merely trying rebut the possible future presumption that they are admitting it’s not inherently distinctive, then why go so far…I imagine filing another application without a 2(f) declaration could rebut this possible presumption…why fight so much?

    I think the dubious evidence portion of the comments might qualify as the answer…if they were sure their evidence in acquired distinctiveness was strong, then a challenge to acquired distinctiveness in the future shouldn’t worry them.

    With that said, I think this is an uphill battle. I think the cuffs and collar, normally on a tuxedo, are clearly a refinement of a tuxedo, a common erotic dance outfit (so i’ve heard). Their Cuffs and Collars are common design of cuffs and collars…arguing against this is tough, even though the entire ensemble is uncommon outside the club, inside the club scandalous outfits are common, and this a common design for a cuff or a collar. If the court doesn’t adopt Chippendales new test (I don’t see this happening), I don’t see this working for them.

    Sadly, all this is not on my exam on Monday…I wish it was…now.

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