The Chippendales company obtained a trademark registration in 2003 for its “Cuffs & Collar” apparel that had been worn by the male dancers since 1979. Based on huge commercial success, this apparel was deemed to have acquired distinctiveness and thus served as a trademark. But Chippendales applied for a second registration on the basis that the mark was inherently distinctive; that is, the design was so unique that it immediately conveyed to the consumer the unique source of the services; here, exotic dancing for women.
Chippendales submitted an impressive amount of evidence comprising numerous declarations by management, dancers, competitors, and even an expert report (something rarely done apart from survey evidence in a case between contesting parties) to the United States Patent and Trademark Office. The expert, Rachel Shteir, Ph.D. (a professor at DePaul University) discussed the history of striptease and the tuxedo, among other subjects, infused with a sociocultural analysis of the Chippendales phenomenon. Her report contained 12 exhibits, including an article by another author containing this sentence: “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.”
That fragment was plucked from the hefty record and became the principal reason for the refusal of registration by the Trademark Trial and Appeal Board (TTAB). One proof that a design is not inherently distinctive is that it, or a variation thereof, is in common use.
Chippendales appealed the refusal to the U.S. Court of Appeals for the Federal Circuit who affirmed using the same test. In re Chippendales USA, Inc., No. 09-1370 (Fed. Cir. Oct. 1, 2010). The CAFC went further (perhaps realizing the skimpy evidence) and took judicial notice of the registrations issued to Playboy for the also well renowned costume of the Playboy bunny. The TTAB has long refused to take judicial notice of other registrations so this may force a change in TTAB practice.
In its decision refusing registration, the CAFC had to first tackle the question of its jurisdiction over the case; namely, could Chippendales be truly injured if denied a second registration based on inherent distinctiveness when it had an existing registration based on acquired distinctiveness? On appeal, Chippendales and the USPTO had simply agreed to jurisdiction and the issue received little attention. Alas for Chippendales, the CAFC determined that jurisdiction was proper because Chippendales was injured since “whether a particular mark is inherently distinctive may affect the scope of protection accorded in an infringement proceeding.” Ouch! Not only was Chippendales denied the new registration, its prior registration was now damaged goods that may receive a lesser scope of protection. Short of the copycat, every potential imitator now had a sentence from the appellate court from which to argue noninfringement.
At the TTAB, the evidence of the pre-existing Playboy bunny costume was scant. At oral argument, the TTAB unsuccessfully attempted to have Chippendales concede that the bunny costume included cuffs and a collar. On appeal, the CAFC reached out through judicial notice to bolster the record. You can judge for yourself if a just result was achieved here; the costumes of the Chippendales and the Playboy bunny are depicted below.