Inherent Distinctiveness vs. Secondary Meaning: Chippendales Fights On Despite Setbacks

The U.S. Court of Appeals for the Federal Circuit (CAFC) has affirmed the decision of the Trademark Trial and Appeal Board (TTAB) that Chippendales’ “Cuffs & Collar” trade dress (pictured below) is not inherently distinctive for “adult entertainment services, namely, exotic dancing for women in the nature of live performances.” In re Chippendales USA, Inc., No. 2009-1370 (Fed. Cir. October 1, 2010) (PDF).

For nearly ten years, Chippendales has been trying to obtain a registration of its trade dress based on inherent distinctiveness rather than acquired distinctiveness or “secondary meaning.” Chippendales filed its first application on November 27, 2000, but for various reasons it was forced to accept a secondary-meaning registration. This registration issued in 2003 and is now incontestable; but Chippendales is not satisfied, and rightly so.

An inherently distinctive mark is preferable to a mark based on secondary meaning, for several reasons. The rights in an inherently distinctive mark attach upon first use, but the rights in a secondary-meaning mark attach only when distinctiveness is acquired. In some cases, this can give rise to difficult questions of priority. A plaintiff’s mark may have an earlier date of first use than the challenged mark, but if the challenged mark was used before the plaintiff’s mark acquired distinctiveness, the plaintiff may be out of luck.

More generally, an inherently distinctive mark is often regarded as stronger than a mark that has acquired distinctiveness through use. With a secondary-meaning mark, a plaintiff may have a harder time preventing infringing uses on related goods or services that are not listed in the mark’s registration. Chippendale’s attorney has noted that infringers will often demand evidence of acquired distinctiveness with regard to such goods and services, resulting in increased litigation costs.

Chippendales accordingly filed a new application to register its Cuffs & Collar trade dress in 2005, claiming inherent distinctiveness. The PTO Examiner rejected this claim, and in 2009 the TTAB affirmed. Chippendales appealed to the CAFC, but on October 1st, the Court upheld the Board’s decision.

The Court sided with Chippendales on a few issues. It agreed that Chippendales’ current registration efforts are not mooted by the existence of its earlier incontestable registration, stating “The potential for benefit in an infringement suit of a registration based on inherent distinctiveness creates a viable controversy.” The Court also rejected the Board’s suggestion that any costume worn by adult entertainers lacks inherent distinctiveness: “Simply because the live adult entertainment industry generally involves ‘revealing and provocative’ costumes does not mean that there cannot be any such costume that is inherently distinctive.” For the rest, however, Chippendales lost on all points.

Chippendales argued that the inherent distinctiveness of its mark should be determined as of 1979, when the mark was first used, rather than as of the present. The Court disagreed:

[T]rademark rights are not static…A term or device that was once inherently distinctive may lose its distinguishing characteristics over time….It would be unfair for an applicant to delay an application for registration and then benefit from having distinctiveness measured at the time of first use. This would allow an applicant to preempt intervening uses that might have relied on the fact that the registration for the mark as inherently distinctive had not been sought at an earlier date.

Turning to the central issue of whether the Cuffs & Collar trade dress is inherently distinctive, the Court applied the test established in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342 (CCPA 1977). Specifically, the Court asked if the mark was viewed by the public as “a mere refinement of a commonly-adopted and well-known form of ornamentation” for the goods or services. The Court answered this question in the affirmative, finding that Chippendales’ mark is a mere refinement or variation of the Playboy bunny costume, a trade dress for adult entertainment services that also features a collar and cuffs, along with other elements.

The Court’s reasoning is opening to question. Having decided that inherent distinctiveness must be determined as of the present, the Court apparently found that the Playboy bunny costume is currently “a commonly-adopted and well-known form of ornamentation” for adult entertainment. However, the evidence for this finding was slender at best. The bunny costume may have been notorious in 1979 when Chippendales began using its mark, but the last Playboy clubs were shut down over 20 years ago. As Wikipedia notes, Playboy magazine “has seen a decline in circulation and cultural relevance” since the 1970s, and the Playboy empire is now a shadow of its former glory. The Court noted that Playboy owns some active registrations of the bunny costume for, inter alia, casino and nightclub services. However, all of these registrations date from 2007 or later. Are they really enough to establish that the bunny costume is “commonly-adopted” and “well-known” at the present time?

One may also wonder whether the Cuffs & Collar trade dress would really be seen as a “mere refinement” of a female outfit featuring bunny ears, a bunny tail and an abbreviated bustier. In such an ensemble, the cuffs and collar are the last things that draw focus. Would people viewing the trade dress depicted above really think of a Playboy bunny, or regard the Cuffs & Collar as a minor variation of the bunny outfit?

In any case, Chippendales is now back at square one, and must consider its options of requesting an en banc rehearing by the CAFC or filing a petition for certiorari to the Supreme Court. The thought of this case being heard by Roberts, Alito, Scalia, Thomas, Kennedy, Breyer, Ginsburg, Sotomayor and Kagan is certainly interesting, but one doubts that it will happen.

Lesson for trademark owners: Chippendales’ quest for inherent distinctiveness is not quixotic. The CAFC has clearly acknowledged “[t]he potential for benefit in an infringement suit of a registration based on inherent distinctiveness.” While a ten-year fight may not be practicable for most parties, trademark owners should consider making at least some extra effort to obtain an inherently distinctive registration rather than one based on secondary meaning.

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