Chippendales’ “Professional and Classy Sexy Fun” Deemed Not Inherently Distinctive.
By Phillip Hill – Edited by Ian C. Wildgoose Brown
In re Chippendales USA, Inc., Serial No. 78/666,598 (Fed. Cir. Oct. 1, 2010)
On October 1, the United States Court for the Federal Circuit affirmed the Trademark Trial and Appeal Board, which ruled that Chippendales USA, Inc. could not register its “abbreviated tuxedo” costume, the “Cuffs & Collar,” as an inherently distinctive mark.
The Court held that even though live adult entertainment typically involves “revealing and provocative” costumes, individual costumes can nevertheless be inherently distinctive. The Cuffs & Collar only qualified for acquired distinctiveness, however, because of shared heritage with the Playboy Bunny costume.
Both the Trademark Trial and Appeal Board and the Federal Circuit applied the test articulated in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342 (C.C.P.A. 1977) for determining inherent distinctiveness. In applying the Seabrook test, the court agreed with the U.S. Patent and Trademark Office (“PTO”) that inherent distinctiveness must be measured at the time of registration as opposed to the time of first use. The court reasoned that it would be unfair to allow applicants to delay registration and then “preempt intervening uses that might have relied on the fact that registration . . . had not been sought at an earlier time.”
The Chippendales all-male revue began wearing the well-known Cuffs & Collar in 1979. In 2000, Chippendales applied to register the Cuffs & Collar as trade dress. The company submitted evidence of both “inherent” and “acquired” distinctiveness under § 2(f) of the Lanham Act. In 2003, the PTO ruled that the costume only qualified for acquired distinctiveness. Chippendales filed a second application in 2005, seeking again to register the costume as inherently distinctive as well.
Under Seabrook, the Court determined (in relevant part) whether the Chippendales mark was:
- a “common” basic shape or design;
- not unique or unusual in the particular field; or
- a mere refinement of or a variation on existing trade dress within the relevant field of use.
The question of inherent distinctiveness hinged on whether the Cuffs & Collar satisfied the third factor. The Court held that the Board erred in suggesting that any costume worn for adult entertainment would be a “mere refinement or variation”. Instead, each costume should be judged on its own merits: the court deemed it incorrect to lump the Cuffs & Collar with revealing would-be professional costumes such as stethoscopes, utility belts, and cowboy chaps with a ten-gallon hat.
The Court held that the PTO was ultimately correct that the Cuffs & Collar was a mere refinement of a preexisting Playboy mark, which includes cuffs, collar, bustier, and bunny ears. In making this determination, the court quoted Chippendales’ own expert’s testimony, which stated that “the collar and cuffs, like the bunny suit which inspired them, has become a trademark recognized, wherever women take their entertainment seriously, as a symbol of professional and classy sexy fun.” The Court declined to define the relevant market as that of adult entertainment for women, and instead defined the market as that for adult entertainment generally.
Chippendales proposed a new test for determining the issue of inherent distinctiveness, requesting that the court abandon both its own Seabrook test and the Supreme Court’s test as articulated in Wal-Mart Stores Inc. v. Samara Bros. Inc., 529 U.S. 210-11 (2000). Chippendales argued that the two tests were in conflict. However, the Court held that it was bound by the Seabrook test and that the Wal-Mart test merely related to “product design trade dress,” which can never be inherently distinctive and can only qualify for protection through acquired distinctiveness.
While Chippendales failed in its most recent attempt to strengthen its trademark, the company’s “Cuffs & Collar” mark from 2003 became incontestable in 2008. However, the distinction between inherent and acquired distinctiveness can have great bearing on the severity of final judgments, because the multi-factor balancing tests that courts employ in trademark actions invariably include an enquiry into the strength of a registered mark. Moreover, Chippendales attorney Stephen Feingold believes that there are enforcement advantages to possessing an inherently distinctive trademark. He notes the deterrent value in discouraging borderline acts that might infringe on the mark. Nevertheless, there continues to be a high bar for qualification under inherent distinctiveness.
Phillip Hill is a 1L at the Harvard Law School.