4th Circuit Upholds District Court and TTAB: Timberland Boot Design Lacks Acquired Distinctiveness

The U.S. Court of Appeals for the Fourth Circuit affirmed-in-part the decision of the U.S. District Court for the Eastern District of Virginia, concluding that the lower court did not err in finding that Timberland’s product configuration mark (shown immediately below) lacked acquired distinctiveness and was therefore unregistrable. The district court had also found the configuration to be de jure functional. [TTABlogged here], but the appellate court declined to reach the functionality issue. TBL Licensing v. Vidal, Appeal No. 23-1150 (4th Cir. April 15, 2024).

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Timberland's proposed mark is directed to eight specific features of its boot, including a "bulbous toe box," a "tube-shaped ankle collar," a "two-toned outsole," and an hourglass-shaped rear heel panel.

After taking discovery, the parties agreed to allow the district court to "resolve any factual disputes without the need for a trial," and both parties moved for summary judgment.

Citing Wal-Mart, the court observed that trademark law does not protect "product designs that lack distinctive meaning as a source identifier." That same principle applies to trademark registration.

On distinctiveness, the issue we face is not whether the public recognizes the entire product as Timberland’s perhaps iconic boot; rather, we must decide whether the district court reversibly erred in concluding that the subset of design features that TBL selectively sought to register lacks distinctiveness in the public’s view.

The Court observed that "[a] party seeking to establish secondary meaning in a product design bears a 'formidable burden of proof.'" The Fourth Circuit assesses secondary meaning through a number of factors: (1) advertising expenditures; (2) consumer studies linking the mark to a source; (3) record of sales success; (4) unsolicited media coverage of the product; (5) attempts to plagiarize the mark; and (6) the length and exclusivity of the mark’s use.

Timberland did not challenge the district court's rejection of its survey evidence. Timberland had used grayscale photographs of the boots, rather than the drawing from the trademark application, "improperly suggesting that the boot was a Timberland." Furthermore, the survey questions "nudged" the recipients to name only a single company associated with the boot.

The lower court found that Timberland's advertising did not call attention to the features that were the subject of its trademark application, but rather depicted the entire boot. Likewise, unsolicited media coverage included features that did not appear in the trademark application (for example, the tree logo burned into the boot). Timberland's impressive sales figures were not given much weight because there was no evidence as to why consumers bought the boot - i.e. no connection with the particular features of the proposed mark. And there was no evidence that competitors sell similar looking boots to trick consumers regarding the source of their products.

Moreover, Timberland's claim of acquired distinctiveness was undercut by its previous statements that only the wheat-yellow color of the boot identified that the boots came from Timberland.

The record was "replete with pictures of boots marketed and sold in the United States that appear 'substantially similar' to the design TBL sought to register, which suffices to prevent TBL from proving it exclusively used that design." The district court made no error in finding that Timberland "came up short in showing that its use of the design was substantially exclusive."

In conclusion, the district court did not clearly err in finding that TBL failed to carry its burden of proving that the boot design it sought to register has acquired a distinctive meaning. For that reason alone, TBL could not register the design described in its application, regardless of whether or not that design, as a whole, is functional. Accordingly, without deciding the functionality issue, the district court’s judgment is AFFIRMED.

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TTABlogger comment: I refuse to say that Timberland got the boot.

Text Copyright John L. Welch 2024.