Monday, July 12, 2010

CAFC Hears Oral Argument in Chippendales' "Cuff & Collar" Appeal

On July 9th, the U.S. Court of Appeals for the Federal Circuit heard oral argument [mp3 here] in the appeal from the TTAB's decision in In re Chippendales USA, Inc., 90 USPQ2d 1535 (TTAB 2009) [precedential]. [TTABlogged here]. 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.]

Steve Feingold argued the case before the CAFC. You may recall that Steve took some heat when his client, Chippendales USA, Inc., sought to register its "Cuffs & Collar" mark on the basis of inherent distinctiveness. What was the point, since Chippendales already owned an incontestable, Section 2(f) registration for the same mark? Steve answered his critics here.

Text Copyright John L. Welch 2010.


At 10:45 AM, Anonymous Anonymous said...

I think that the whole "inherently distinctive" versus "acquired distinctiveness" argument misses the point -- whether registered on the Principal Register under Section 2(f) or not, the marks are distinctive. Yes, a mark registered under Section 2(f) probably began its life as a descriptive mark, but now the consuming public attaches source-identifying significance to it, which is the whole purpose of trademark protection. Indeed, a mark that is ultimately registered under Section 2(f) could become even stronger than so-called "inherently distinctive" marks through advertising and sales.

As such, it is my personal belief that this Chippendale's case is a waste of the client's time and money -- its mark is distinctive, who really cares how it got that way?

At 12:31 PM, Blogger John L. Welch said...

Anonymous, I suggest that you read Steve Feingold's article on the practical differences between a 2(f) registration and a not-2(f).

At 2:44 PM, Blogger T. D. Ruth said...

I'm in the midst of an infringement case where the 2(f) issue is a major issue. Judge relied heavily on that to refuse our summary judgment motion.

John, to Steve's point regarding 2(f) registration becoming essentially an admission of lack of inherent distinctiveness - for the same mark we're litigating, when I filed I reserved all rights, made substantive arguments for the mark's suggestiveness and offered 2(f) in the alternative. I didn't hear back from the examiner but the registration issued as a 2(f).

So, even if the applicant reserves rights and only presents 2(f) in the alternative, do you think it's still tantamount to an admission of the mark's relative weakness?

It has always troubled me that the registration will issue as 2(f) without further action by the examiner - it seems they should issue an affirmative (final) refusal on the merits of the applicant's suggestiveness argument and present the applicant with an opportunity to either finish out the appeal process on suggestiveness or concede the 2(f).

At 3:21 PM, Blogger John L. Welch said...

T.D.: The examining attorney is supposed to (at least as of now) consider both inherent distinctiveness and 2(f), as alternatives. That's what happened in my application to register THE TTABLOG. The EA accepted the 2(f) evidence and issued a final refusal as to inherent distinctiveness. I appealed the latter and lost, but then the registration issued under 2(f).

I suggest that you listen to the oral argument regarding what happened in the Cuff & Collar case.


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