Addressing whether the well-known Chippendales "Cuffs & Collar" costume is inherently distinctive for adult entertainment services, the U.S. Court of Appeals for the Federal Circuit affirmed the refusal to register the mark, finding that the costume was not inherently distinctive, but is a "mere variant or refinement" of the Playboy Bunny costume. In re Chippendales USA, Inc., Case No. 09-1370 (Fed. Cir., Oct. 1, 2010) (Dyk, J.).
Chippendales has provided adult entertainment services for women in the form of dancing men wearing an "abbreviated tuxedo" costume—wrist cuffs and a bowtie collar without a shirt—since 1979. The applicant applied to register its "Cuffs & Collar" trade dress for "adult entertainment services, namely exotic dancing for women" in 2000. Chippendales had alleged that its trade dress possessed both inherent distinctiveness and acquired distinctiveness. The U.S. Patent and Trademark Office (USPTO) issued a registration for the trade dress in 2003, although the examining attorney determined that the trade dress was only entitled to registration based on acquired distinctiveness. In 2005, the applicant filed a second application to register its "Cuffs & Collar" trade dress for the same services, based upon inherent distinctiveness. The examining attorney found that the trade dress was not inherently distinctive and refused registration.
On appeal, the Trademark Trial and Appeal Board considered whether Chippendales’s "Cuffs & Collar" trade dress, or a variation of it, was in common use—precluding inherent distinctiveness. Applying the standard in Seabrook Foods v. Bar-Well Foods, the Board determined that applicant’s Cuffs & Collar was a common basic shape or design because exotic dancers commonly wear costumes or uniforms such as "a doctor wearing a stethoscope, or a construction worker wearing a utility belt, or a cowboy wearing chaps and a ten-gallon hat." Last, the Board determined that the Cuffs & Collars trade dress was not unique or unusual in the field of use because it was inspired by the well-known Playboy Bunny suit. Chippendales appealed.
On appeal, the Federal Circuit considered whether the Cuffs & Collars suit was product packaging trade dress, which can be inherently distinctive, or product design trade dress, which cannot. It determined that costume was "trade dress" as it is part of the packaging of the product—i.e., "adult entertainment services, namely, exotic dancing for women." Further, the Federal Circuit applied the three relevant factors of the Seabrook Foods test to determine whether the Cuffs & Collars was inherently distinctive, namely: whether it is a common shape or design, whether the symbol is common in the particular field of use and whether it is a mere refinement of or variation on existing trade dress within the relevant field of use. If trade dress satisfies any one of the tests, it is not inherently distinctive.
The Federal Circuit noted that the second factor was not applicable and that the Board erred to the extent that it suggested that any costume would lack inherent distinctiveness within the live adult entertainment industry. "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." Thus, the "mere refinement or variation" test could not be met by showing that costumes generally are common in the industry.
However, the Court determined that the Board was correct in concluding that applicant’s Cuffs & Collar trade dress was not inherently distinctive under Seabrook Foods, finding that it was a variation of the Playboy Bunny outfit. In so finding, the Court noted that the Playboy Bunny outfit had been widely used for almost 20 years before Chippendales’ first use of its Cuffs & Collar trade dress, had acquired multiple trademark registrations (one which was registered 15 years prior to the applicant’s first use of its Cuffs & Collar trade dress) for related services that and there was a "pervasive association" between the Playboy brand and adult entertainment.