In Re Chippendales Usa Inc.

• Decision Date: 01 October 2010
• Docket Number: No. 2009-1370.,2009-1370.
• Parties: In re CHIPPENDALES USA, INC.
• Court: U.S. Court of Appeals — Federal Circuit

622 F.3d 1346

In re CHIPPENDALES USA, INC.

No. 2009-1370.

United States Court of Appeals,Federal Circuit.

Oct. 1, 2010.

Stephen W. Feingold, Kilpatrick Stockton LLP, of New York, NY, argued for appellant. With him on the brief was Michelle M. Graham.

Christina J. Hieber, Associate Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Alexandria, VA, argued for the Director of the United States Patent and Trademark Office. With her on the brief were Raymond T. Chen, Solicitor. Of counsel was Kristi L.R. Sawert, Associate Solicitor.

Before DYK, FRIEDMAN, and MOORE, Circuit Judges.

DYK, Circuit Judge.

Appellant Chippendales USA, Inc. (“Chippendales”), appeals a decision of the Trademark Trial and Appeal Board (“the Board”). The Board affirmed the examining attorney's refusal to register the “Cuffs & Collar Mark” as inherently distinctive. We affirm.

Background

The applicant, Chippendales, is in the business of providing adult entertainment services for women. It opened its first strip club in Los Angeles in 1978. In 1979, Chippendales performers began wearing an abbreviated tuxedo-wrist cuffs and a bowtie collar without a shirt-as part of their act. This costume, referred to as the “Cuffs & Collar,” was featured prominently in Chippendales' advertising and performances over the past several decades. It is set forth below:

In November 2000, Chippendales filed an application to register the Cuffs & Collar trade dress. In 2003, the United States Patent and Trademark office (“PTO”) issued Registration No. 2,694,613 for the Cuffs & Collar for “adult entertainment services, namely exotic dancing for women.” U.S. Trademark Registration No. 2,694,613 (the “'613 mark”). A mark that is inherently distinctive qualifies for registration under the Lanham Trademark Act (“Lanham Act”). See Pub.L. No. 79-489, 60 Stat. 427 (1946) (codified at 15 U.S.C. § 1051 et seq.). A mark can also qualify for trademark protection under Section 2(f) of the Lanham Act if the mark has become distinctive through use in connection with the applicant's goods in commerce, known as acquired distinctiveness. See 15 U.S.C. § 1052(f) (“Section 2(f)”).

Although Chippendales submitted evidence both of “inherent” distinctiveness and, alternatively, “acquired” distinctiveness under Section 2(f) of the Lanham Act, the examining attorney in 2003 concluded that the applicant was only entitled to a registration based on acquired distinctiveness. Because of the existing procedure at the PTO at the time of the decision, Chippendales could not contest the basis of the examining attorney's decision. The sole option at that time would have been for Chippendales to request that the registration be cancelled and that the mark be remanded for reconsideration. Chippendales was about to commence an infringement action based on the registration and thus opted not to initiate the cancellation of its registration under Section 2(f). The '613 mark became incontestable in 2008 under 15 U.S.C. § 1065. ¹

In 2005, Chippendales filed a second application, seeking again to register the Cuffs & Collar mark as inherently distinctive for “adult entertainment services, namely exotic dancing for women,” in the nature of live performances. Chippendales claimed that it was entitled to a registration on the ground that the mark was inherently distinctive, even though it had secured a registration under Section 2(f). In the ordinary course, the PTO bars applicants from registering the same mark for the same goods and services. See Trademark Manual of Examining Procedure § 703 [hereinafter TMEP]. However, here Chippendales petitioned for-and was granted-a waiver of that procedure, to resolve “the underlying substantive issue as to whether the proposed mark is inherently distinctive.” J.A. 664.

On September 5, 2007, the examining attorney issued her final Office Action refusing to register the Cuffs & Collar because the mark was not inherently distinctive. The Board affirmed. In re Chippendales USA, Inc., 90 U.S.P.Q.2d (BNA) 1535, 1537 (T.T.A.B. Mar. 25, 2009). The Board held that it was bound to apply our predecessor court's decision in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342 (C.C.P.A.1977), to determine inherent distinctiveness.

On the merits, the Board concluded that the mark was not inherently distinctive under Seabrook. As we discuss below, Seabrook holds that a mark is not inherently distinctive if it, or a variation thereof, is in common use. 568 F.2d at 1344. The Board considered whether the mark was inherently distinctive “at the time applicant began to use the mark nearly 30 years ago.” Chippendales, 90 U.S.P.Q.2d at 1538. The Board noted, however, that “[w]e are not suggesting that registrability should be determined at any time other than at the time the application is pending.” Id. at 1538 n. 6. The Board concluded that the Cuffs & Collar was a common basic shape design, because it is not unusual for exotic dancers to “wear costumes or uniforms which are ... revealing and provocative.” Id. at 1541. The Board also concluded that the Cuffs & Collar was not unique or unusual in the particular field of use, because costumes generally are common to the field of exotic dancing. See id. at 1542. (“[A]ll strippers begin their routine with some kind of fantasy outfit.”). In reaching this conclusion, the Board cited examples of “various provocative costumes,” such as “a stripper representing either a doctor wearing a stethoscope, or a construction worker wearing a utility belt, or a cowboy wearing chaps and a ten-gallon hat.” Id. at 1541.

Alternatively, the Board concluded that the Cuffs & Collar mark was not unique or unusual in the particular field of use because it was inspired by the ubiquitous Playboy bunny suit, which included cuffs, a collar and bowtie, a corset, and a set of bunny ears. Id. at 1546. Finally, the Board concluded that the Cuffs & Collar mark “was a refinement of an existing form of ornamentation for the particular class of services,” based on the same evidence discussed in the treatment of the first two Seabrook factors. Id. at 1542. The dissent disagreed, concluding that the Cuffs & Collar mark was in fact inherently distinctive. Id. at 1544-45. Chippendales timely appealed, and this court has jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(B).

Discussion

This court reviews the Board's legal conclusions de novo, and the Board's factual findings for substantial evidence. See In re Pacer Tech., 338 F.3d 1348, 1349 (Fed.Cir.2003); see also 5 U.S.C. § 706(2)(E). Whether an asserted mark is inherently distinctive involves both a legal question as to the correct standard to apply and a factual determination. “The issue of inherent distinctiveness is a factual determination made by the board.” See Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 1359 (Fed.Cir.2001). The PTO has the burden to establish a prima facie case of no inherent distinctiveness. See Pacer Tech., 338 F.3d at 1350. Once the PTO sets forth a sufficient prima facie case, the burden shifts to the applicant to come forward with evidence to rebut the prima facie case. See id.

I

In order to understand the nature of appellant's claim, some background is useful. In general, trademarks are assessed according to a scale formulated by Judge Friendly in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 10-11 (2d Cir.1976), which evaluates whether word marks are “arbitrary” or “fanciful,” ² “suggestive,” ³ “descriptive,” ⁴ or “generic.” ⁵ Word marks that are arbitrary, fanciful, or suggestive are inherently distinctive. See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210-11, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000). Descriptive marks that acquire secondary meaning may also qualify for protection under Section 2(f), while generic marks generally cannot qualify for trademark protection at all. Abercrombie & Fitch, 537 F.2d at 9-10.

Trademark protection may be secured for “trade dress.” “Trade dress” encompasses the design and appearance of the product and its packaging, and the Supreme Court has held that trade dress can be inherently distinctive. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 775, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). Here, the Cuffs & Collars worn by Chippendales dancers constitutes “trade dress” because it is part of the “packaging” of the product, which is “[a]dult entertainment services, namely exotic dancing for women.” U.S. Trademark Application Serial No. 78/666,598 (the “'598 Application”).

This court applies a four-part test for determining the inherent distinctiveness of trade dress. This four-part test is set forth in our decision in Seabrook as follows:

whether it was a “common” basic shape or design, [2] whether it was [not] unique or unusual in the particular field, [3] whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods, or [4] whether it was capable of creating a commercial impression distinct from the accompanying words.

Seabrook, 568 F.2d at 1344. If a mark satisfies any of the first three tests, it is not inherently distinctive. See id.; 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 8:13 (4th ed. 2008). The fourth factor, whether the trade dress was capable of creating a commercial impression distinct from the accompanying words, is not applicable here.

Inherent distinctiveness does not depend on a showing that consumers actually identify the particular mark with the particular business; this is a question of acquired distinctiveness, or secondary meaning. ⁶ As we elaborated in Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192 (Fed.Cir.1994), ultimately “the focus of the [inherent distinctiveness] inquiry is whether or not the trade dress is of such a design that a buyer will immediately rely on it to...