Tuesday, October 05, 2010

CAFC Affirms TTAB: Chippendales' "Cuffs & Collar" Mark Not Inherently Distinctive

The U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision [TTABlogged here] holding that Chippendales' "Cuff & Collar" costume mark is not inherently distinctive for "adult entertainment services, namely exotic dancing for women." Applying the Seabrook test for product packaging, the CAFC agreed with the Board that the Chippendales' mark is a mere variant or refinement of the "pervasive Playboy mark, which includes the cuffs and collar together with bunny ears." In re Chippendales USA, Inc., 96 USPQ 2d 1681 (Fed. Cir. 2010) [precedential]. [Oral argument TTABlogged here].

Slightly modified version

Mootness?: The court first considered whether the fact that Chippendales already has a Section 2(f) registration for this mark renders the question moot. Chippendales urged that a registration issued without a Section 2(f) showing is a stronger and more readily enforceable registration. The court agreed, observing that, although Chippendales' particular situation is unlikely to arise again, "there are potential collateral consequences resulting from the form of registration under the Lanham Act and that this presents a viable controversy."

When to Measure Distinctiveness?: Chippendales argued that the determination of inherent distinctiveness should be made a the time the mark is first used, while the PTO asserted that it should be measured at the time of registration. The court agreed with the PTO:

It would be unfair for an applicant to delay an application for registration and then benefit from having distinctiveness measured at the time of first use. This would allow an applicant to preempt intervening uses that might have relied on the fact that the registration for the mark as inherently distinctive had not been sought at an earlier time.

Inherently Distinctive?: The CAFC ruled that the Board erred in suggesting that any costume in the context of the adult entertainment industry would lack inherent distinctiveness, but the Board was correct in its ultimate conclusion: under the third Seabrook factor, the Cuffs & Collar mark constitutes "a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods."

That test is satisfied if the Cuffs & Collar mark is a mere variant or refinement of a particular costume. The Board found that the Cuffs & Collar mark was not inherently distinctive "because of the existence of the pervasive Playboy mark, which includes the cuffs and collars together with bunny ears."

Chippendales lamely argued that there are separate markets for male adult entertainment and female adult entertainment, and therefore the Playboy bunny suit is not relevant. The court, however, saw no reason to disturb the TTAB's finding that the relevant market was "adult entertainment," not adult entertainment specifically for women.

Finally, Chippendales quixotically offered its own "better test" for inherent distinctiveness, maintaining that the Supreme Court's decision in Wal-Mart is add odds with Seabrook and that the court should overrule Seabrook. The court, however, pointed out that the Supreme Court expressed no disagreement with Seabrook, although rejecting it as a test for product configuration marks. In any event, the CAFC panel "is bound by Seabrook, and only the court en banc may overturn it."

And so the court affirmed the Board's decision.

TTABlog note: Will Chippendales seek an en banc review? Will it petition for certiorari? I'll bet the latter.

BTW: I was fortunate enough to argue the Wiley v. American Greetings red-heart-on-a-teddy-bear case at the First Circuit. My second son was born the day before the argument, and so we named him Teddy. [Actually we named him Jack, but why let the facts get in the way of a bad story?]

Text Copyright John L. Welch 2010.

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