E.D. Va. Affirms TTAB: Timberland Boot Design is Functional and Lacks Acquired Distinctiveness

In an appeal by way of civil action under Section 1071(b), the U.S. District Court for the Eastern District of Virginia upheld the TTAB's decision [TTABlogged here] affirming a refusal to register certain features of Timberland's boot design on the ground that the proposed mark for "footwear, namely, lace-up boots" lacked acquired distinctiveness. Although the Board declined to rule on the USPTO's Section 2(e)(5) functionality refusal, the district court affirmed that refusal as well. TBL Licensing, LLC v. Vidal, Civil Case No. l:21CV681 (E.D. Va. December 8, 2022).

The boot design at issue includes a "bulbous toe box," a "tube-shaped ankle collar," a "two-toned outsole," an hourglass-shaped rear heel panel, and other elements: a total of eight specific features.

The court began with the issue of functionality, finding that "[u]tility patents disclose, and some claim the features of TBL's applied-for design, and TBL's own advertising touts the functional benefits the features."

Most of the issued patents cited in this brief have expired, meaning that the disclosed features are in the public domain. To conclude that TBL can strip the public's right to copy and benefit from these features today would be antithetical to the pro-competitive objectives of both trademark and patent law.

With regard to acquired distinctiveness, the court noted the lack of "look for" advertising vis-a-vis the subject features, and it further observed:

TBL identifies itself as the source of its boots through use of a comprehensive range of traditional word marks, stylized word marks, logos, and slogans. These marks allow consumers to see that a boot is a TBL product before they get close enough to examine a pair of boots to tick off a check-list of eight specific product features. *** [T]he source-identifying significance of TBL's comprehensive use of traditional trademarks cannot be overstated.

Moreover, "the saturation of the market with look-alike boots using many of the same functional features is fatal to TBL's claim that consumers look for these features to identify TBL's boots and distinguish them from competing boots."

Although TBL's sales and advertising figures were large, "it failed to link-up its large sales and advertising numbers with the one thing it needs to prove: that amidst a sea of similar-looking boots, consumers nevertheless can identify TBL's product just by the eight specified product features irrespective of any other marks used on or with the product."

TBL's secondary meaning survey evidence was seriously flawed: first, the stimuli used in the survey were photographs of the TBL boot, not the drawings from the trademark application; second, the survey did not use "the tried-and-true accepted questions and progression deemed key to determining acquired distinctiveness;" and third, the control looked nothing like TBL's boot.

TBL has failed to carry its burden to prove that these eight features are nonfunctional and that consumers recognize these eight features as a unique indicator of the source of the boots.

And so, the court granted defendant's motion for summary judgment.

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TTABlogger comment: This appeal reminds me of the old Henny Yougman joke. Doctor to patient: You're overweight. Patient: I want a second opinion. Doctor: Okay, you're ugly, too.

Text Copyright John L. Welch 2022.