Should Chippendales be granted a trademark in their “trademark” “Cuffs and Collar” outfit? The United States Court of Appeals for the Federal Circuit recently addressed the issue in In re Chippendales, USA, Inc. No. 2009-1370, 2010 US App. LEXIS 20421 (Fed. Cir. October 1, 2010).
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 (1992)) or proven distinctive through pervasive use. Here, the “Cuffs and Collar” worn by Chippendales dancers constitute “trade dress” because they are part of the “packaging” of the product, which is “[a]dult entertainment services, namely exotic dancing for women.” At issue was whether the Cuffs and Collar were inherently distinctive—and thus, entitled to a federal trademark. The Federal Circuit Court of Appeals affirmed the Trademark Office in determining that such “packaging” is not inherently distinctive:
In determining inherent distinctiveness (as opposed to acquired distinctiveness), the Court applied the following four-part test:
 whether it was a “common” basic shape or design,  whether it was [not] unique or unusual in the particular field,  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  whether it was capable of creating a commercial impression distinct from the accompanying words.
Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344 (C.C.P.A. 1977). 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, was not applicable).
As the Federal Circuit counseled 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 differentiate the product from those of competing manufacturers; if so, it is inherently distinctive.” Id. at 1206 (citing Paddington Corp. v. Attiki Imps. & Distribs., Inc., 996 F.2d 577, 582–84 (2d Cir. 1993)). Thus, if the mark is inherently distinctive, it is presumed that consumers will view it as a source identifier. If the mark is not inherently distinctive, it is unfair to others in the industry to allow what is in essence in the public domain to be registered and appropriated, absent a showing of secondary meaning. The policy is basically the same as the prohibition against registering generic word marks, or descriptive marks that have not acquired secondary meaning.
Deciding that the proper time for measuring inherent distinctiveness is at the time of registration, the Court ultimately found that the third Seabrook question (whether the Cuffs and Collar mark constitutes “a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods.”) was satisfied as the Cuffs and Collars were a mere variant or refinement of the pervasive Playboy mark, which includes the cuffs and collar together with bunny ears. As such, the Cuffs and Collar were not inherently distinctive and could not be trademarked on that basis (could only be trademarked on the basis that the symbols had acquired distinctiveness through pervasive use), proving the adage that in the world of trademarks, “less is not always more.”
Stephen E. Noona is the head of Kaufman & Canoles’ Trial Section and Co-chair of its Intellectual Property Law and Franchising Practice Group. In his 24 years of practice, he has been counsel in hundreds of intellectual property cases in federal courts across the nation, including over sixty (60) patent cases in the Eastern District and is Fellow in the American College of Trial Lawyers. He regularly appears before the judges in all four Divisions of the Eastern District on intellectual property matters. –Stephen E. Noona