Curtains fall on Chippendales' 'cuffs & collar' mark

United States of America
In In re Chippendales USA Inc (Case 2009-1370, October 1 2010), the US Court of Appeals for the Federal Circuit has ended Chippendales USA Inc’s 10-year-old attempt to register the following mark for "adult entertainment services, namely exotic dancing for women in the nature of live performances":

The applied for mark was described as “three-dimensional human torso with cuffs around the wrists and neck collar comprising of a bow tie” where the dotted lines were not claimed as part of the mark.
Chippendales has provided strip club services in the United States since 1978. In 1979 the Chippendale performers began wearing wrist cuffs and a bow tie collar without a shirt as part of their act. This costume was referred to as 'cuffs & collar' and was prominently featured in Chippendales’ advertising and performances for decades.
In November 2000 Chippendales applied for the registration of the above mark on the Principal Register. The examining attorney refused registration on the grounds that the mark was descriptive. Chippendales argued that the mark was inherently distinctive or, in the alternative, had acquired distinctiveness. The examining attorney determined that the mark was registrable only under a claim of acquired distinctiveness. Because of US Patent and Trademark Office procedures at that time, Chippendales was not able to contest that determination without cancelling its registration, which it chose not to do.
In 2005 Chippendales filed an application for the same mark for the same services and claimed that the mark was entitled to registration on the Principal Register without a claim of acquired distinctiveness. Once again, the examining attorney handling this application refused registration on the grounds that the mark was not inherently distinctive. Chippendales appealed to the Trademark Trial and Appeal Board (TTAB), which also found that the mark was not inherently distinctive (for further details please see "Chippendales' collar and cuffs mark fails to get an encore"). Chippendales appealed to the Federal Circuit.
The Federal Circuit considered three issues on appeal.
First, the court addressed the issue of whether a registration for a mark under a claim of acquired distinctiveness moots the request for an inherent distinctiveness registration. The court found that, although all marks registered on the Principal Register are entitled to the same presumptions and are able to achieve incontestable status, there may be differences in the enforcement context for inherently distinctive and acquired distinctiveness registrations.
In determining likelihood of confusion, all courts consider the strength of an asserted mark. There are two types of strength: conceptual and marketplace. A mark that is inherently distinctive may thus be entitled to a broader scope of protection than a mark that has acquired distinctiveness and may be beneficial in an infringement action. Such a mark has more conceptual strength.
The second issue before the court was the point at which acquired distinctiveness should be measured: at the time of registration or when the mark was first used? The court held that the proper time to measure is at registration. Setting the time at first use would be fundamentally unfair. An owner of an inherently distinctive mark that loses its distinctiveness over time could wait to apply for registration and benefit from its original distinctiveness. According to the court, “[t]his would allow an applicant to pre-empt 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 time”.
As its final consideration, the court turned to the question of the distinctiveness of the 'cuffs & collar' mark. For trade dress, three factors are considered to determine distinctiveness:
  • Is the trade dress common generally?
  • Is the symbol common in the particular field of use?
  • Is the mark a mere refinement or variation on existing trade dress within the relevant field of use?
A finding on one of these factors may render the mark not inherently distinctive.
When it applied these factors, the court determined that it could make a determination on the third factor alone. It further noted that the TTAB had erred when it concluded that any costume would lack inherent distinctiveness in the context of the adult entertainment industry. Specifically, the court stated that “[t]he ‘mere refinement or variation’ test is not satisfied by showing that costumes generally are common in the industry”. In this case, however, there was a well-known existing costume which rendered the 'cuffs & collar' mark not inherently distinctive.
The “existing trade dress” the court looked to in evaluating the third factor was the well-known Playboy bunny costume. The court found as follows:
"The Playboy bunny suit, including cuffs and a collar, was widely used for almost 20 years before Chippendales’ first use of its 'cuffs & collar' trade dress. The 'cuffs & collar' mark is very similar to the Playboy bunny costume, although the 'cuffs & collar' mark includes no bunny ears and includes a bare-chested man instead of a woman in a corset."
The 'cuffs & collar' mark was simply a refinement of the existing Playboy bunny trade dress and was not inherently distinctive.
However, the court clearly left open the possibility that a costume used in the adult entertainment industry could be inherently distinctive. 

Leigh Ann Lindquist, Sughrue Mion PLLC, Washington DC

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