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!!

Originally posted 2012-08-24 11:24:12. Republished by Blog Post Promoter

By Ron Coleman

I write this blog.

16 thoughts on “Chippendales cuffs-and-collar TM “distinctiveness” claim goes “gently” into that dark night”
  1. Ron,
    Unfortuantely, many bloggers and the press are ignoring the fact that Chippendales does own a registration for the Cuffs and Collar under 2(f) based on acquired distinctiveness. The Federal Circuit’s opinoin is limited to the question of whether the Cuffs and Collar unifor is inherently distincitve. While Chippendales is disappointed by the decision, we will continue to enforce our rights as we have for many years relying on our incontestable registration for this trade dress.
    One other note of interest to the Trademark Bar. The Federal Circuit held it could take judicial notice of a registration not otherwise in the Record. I believe that this is a position that many have argued to the TTAB without success in the past.

  2. Steve,
    I also found the “judicial notice” aspect quite interesting. I hope the TTAB will follow; it has always seemed logical to me that the Board should be able to take judicial notice of official publicly available government records from its own agency.

  3. It is amazing how the main stream press whooped it us about Chippendales not be able to “trademark” its costume. Does anyone out there have a clue?

    As to the judicial notice point, what difference does it make whether the Playboy outfit was registered or not? Lots of marks are registered but are in minimal use. The key is how well known the bunny outfit is/was, not whether there are registrations. Taking judicial notice that registrations exist proves nothing.

  4. Heh, i think in gentleman’s club “gentelmens” not only seating and make very inteligent discussion 🙂
    For this day, gentelmen doesn`t mean the same what 50 years ago.
    I have ask, gentelman is because he is wear like gentelman, or because he has got behavior gentelman…

  5. Well, the mainstream press can be excused for being sloppy about trademark law (I suppose — I haven’t excused them myself), but your humble blogger can’t for just parroting what they wrote. My apologies to you and your client, Steve, and to anyone else who was misled on the point. Given my track record, however, I do not concede that any reliance on bloggy representations here (as opposed to the kind I am paid to make or which are otherwise governed by professional ethics) is ever reasonable.

    A non-sloppy (i.e., reliable) blogger is Dennis Crouch, who explained the obvious procedural question that was the basis of my own confusion — namely, how, if you’ve got an incontestible registration, could this issue even have been before the TTAB? — in the post I linked to above:

    This case arose in 2005 when Chippendales requested a new registratation for the same mark based upon its inherent distinctiveness. (The company wanted to strengthen its mark.) The Tradmark Trial and Appeal Board ruled against Chippendales — finding that the mark was not inherently distinctive.

    So there you go. Chippendale’s does, indeed, have an incontestible registration. Just not the one that was up on appeal.

    At least as interesting for non-specialists, by the way, is this inquiry — and the subsequent responses — in an earlier comment string on this blog:

    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.

    See here for the whole post, and the comments…

    Agreed too on the “judicial notice” point, which also has in the past been discussed here.

  6. I am worried about too many male members of the distinguished trademark bar spending so much time in male strip clubs. Gentlemen, there are a lot of nice clubs out there where women remove their clothing too. Let’s give equal time to the ladies.

    Does anyone know of any trademark cases involving female strip clubs?

  7. If the Chippendales registration has already become incontestable, why did it bother to spend the time and presumably money to pursue the appeal on the inherent distinctiveness issue? Whatever benefit it would have gained from claiming inherent distinctiveness does not seem worth the expense of litigation.

  8. Your video reminded me that we will soon see a unique line of crackers released in Moscow. It will feature the likeness of the Prime Minister. They will be called “Putin on the Ritz.”

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