Originally posted 2009-12-22 11:07:13. Republished by Blog Post Promoter

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.

By Ron Coleman

I write this blog.

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