Thursday, March 26, 2009

Precedential No. 8: Divided TTAB Panel Affirms Refusal to Register Chippendales' "Cuffs & Collar Mark"

In a highly entertaining 41-page opinion [stripped here to its bare essentials], a divided TTAB panel affirmed the PTO's refusal to register the "Cuffs & Collar" design mark shown below, finding it not inherently distinctive for "adult entertainment services, namely exotic dancing for women in the nature of live performances." [Applicant Chippendales already owns an incontestable, Section 2(f) registration for the same mark; it was seeking to establish inherent distinctiveness this time around.] In re Chippendales USA, Inc., 90 USPQ2d 1535 (TTAB 2009) [precedential].

Observing that application of the packaging/product design dichotomy [the former may be inherently distinctive, the latter cannot be] is not feasible when considering a service mark, the Board stated that it "must simply assess whether it is reasonable to assume that the consumer is predisposed to view the trade dress as a source indicator." Accordingly, the Board held that the mark at issue here, "like the service mark in Two Pesos, is a form of trade dress which may be inherently distinctive." [Emphasis in original].

The question then was whether the "Cuffs & Collar" mark was inherently distinctive at the time Chippendales adopted the mark in 1979.

The Board applied the first three factors of the CCPA's four-part Seabrook test to determine the mark's inherently distinctiveness:

1. whether the Cuffs & Collar Mark is a common basic shape or design;

2. whether the Cuffs & Collar Mark is unique or unusual in the particular field;

3. whether the Cuffs & Collar Mark is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods or services viewed by the public as a dress or ornamentation for the goods or services.

The panel majority ruled that Examining Attorney Steven R. Berk had established a prima facie case of non-distinctiveness. The evidence included examples of various provocative costumes, leading the majority to conclude that "the Cuffs & Collar Mark was a common basic shape or design," one that comprised a "simple variation on revealing and provocative costumes or uniforms generally in use in the adult-entertainment, exotic dancing field."

Chippendales' expert, Dr. Rachel Shteir, stated that the Cuffs & Collar design was "inspired" by Playboy's bunny costume, which suggested to the panel majority that the Cuffs & Collar Mark was "not necessarily unique in the broader field of adult entertainment when applicant adopted it." Indeed, this same evidence led the majority to find that the mark was a refinement of an existing form of ornamentation.

The majority pooh-poohed Dr. Shteir's declaration because she, although highly qualified in the field of dramaturgy, was not familiar with the field of trademarks and did not conduct any empirical research, "difficult as that may be at this point in time," to determine how customers perceived the Cuffs & Collar Mark when first adopted. [Her comparison of the Chippendale dancers to Mary Poppins, both purportedly being iconic characters, did not impress the majority.]

The majority found nothing in the Dr. Shteir's testimony or in the other evidence "which in any way alters the simple fact that the focus of the service at its inception was the bodies of the performers, not the particulars of their minimal attire."

The majority therefore concluded that Chippendales had "failed to present sufficient evidence to establish that its mark was inherently distinctive at the time of adoption, and has not, therefore, successfully countered" the PTO's prima facie case. The majority noted, however, that Chippendales' ownership of an incontestable registration for the mark "should serve as no small consolation in spite of our decision here."

Judge David Bucher, in a lively dissent, 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 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." She posed the critical question as follows:

Would a woman attending her first Chippendales performance in the late 1970’s have understood from that show alone that the “Cuffs and collar” were a designation of Chippendales or would she have seen it as just some generic dress for male strippers? [Or would she not have paid that much attention to it? -ed.]

Judge Bucher then cogently presented in bullet-point format his many disagreements with the PTO's position and/or the salient points made by the majority. Rather that regurgitate them here (they are recommended reading), suffice it to say that he found, especially in light of Dr. Steir's testimony, that the PTO did not meet its burden to show that the Cuffs & Collar Mark is a mere refinement of an existing form of ornamentation.

TTABlog comments: For what it's worth, imaging myself as a woman attending a Chippendales show in 1979, I don't think I would have considered the Cuffs & Collar outfit to be a source indicator. I would have seen it, if I paid attention to it at all, as simply a clever costume (or non-costume). But the question here is, did Chippendales prove its case? The majority said no. Judge Bucher said yes.

What is the significance, if any, of the fact that all three panel members (Walsh, Wellington, and Bucher) are male?

Readers may recall that Ron Coleman, at his Likelihood of Confusion blog (here), thought Chippendales would win this one. In the commentary to Ron's post, Chippendales' attorney, Steve Feingold, explained why his client was seeking another registration, even though it already owned an incontestable, 2(f)-based registration for the same mark:

"[S]everal times over the last few years when we have written to an infringer providing goods or services not within the ambit of the recitation, the response has been that the 2(f) notation means that we have no rights outside of that area without proving secondary meaning in a new market place. I strongly disagree with that argument if the infringement is happening in an area of related commerce but when you are dealing with a non-trademark lawyer who is responding because he is friends with the infringer (as often happens when you are going after small companies that just 'can't believe that in America you can stop me from doing that') being right is just not enough to avoid undue expense."

Ron Coleman comments here, embracing Judge Bucher's position and pointing out that he (Ron) thought Chippendales "should" win, not "would win."

TTABlog postscript: Chippendales appealed to the CAFC on May 29, 2009.

Text Copyright John L. Welch 2009.


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