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Judge ‘strips’ Chippendales of bid to beef up trademark

from – Chippendales, known for its all-male revue of gyrating erotic dancers, lost a court case on Friday, which could make defending its trademarked “Cuffs & Collar” outfits more difficult.

The U.S. Court of Appeals for the Federal Circuit ruled the Chippendales’ abbreviated tuxedo costumes – wrist cuffs and a bowtie collar with no shirt – don’t constitute an “inherently distinctive” trademark because they were inspired by the Playboy Bunny suits that include cuffs and a collar with a corset and bunny ears.

Chippendales unsuccessfully argued that, even if Playboy Bunny suits were common in the adult entertainment industry, there are separate markets for male and female adult entertainment.

Chippendales still holds a more limited 2003 “Cuffs & Collar” trademark for “adult entertainment services, namely exotic dancing for women.”

But there are enforcement advantages to having an “inherently distinctive” trademark – namely, avoiding litigation costs, said Chippendales attorney Stephen Feingold, who believes the company can continue to stop others from usurping the “cuffs-and-collar” look for uses such as clothing, Halloween costumes and nightclub services.

“When trademark lawyers see an ‘inherently distinctive’ mark, they’re more likely not to want to push the envelope and get involved in a lawsuit,” Feingold said.

Background from – 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. 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).


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