Applicant applied to register its trade dress consisting of wrist cuffs and a bowtie collar without a shirt for adult-entertainment services. The PTO determined that Applicant was entitled to registration only based on acquired distinctiveness. After Applicant filed a second application seeking registration based on inherent distinctiveness, the TTAB held that the Applicant’s trade dress was not inherently distinctive based on, among other things, its common basic shape design, the fact that it is not unusual for exotic dancers to wear costumes that are revealing and provocative, and the fact that the trade dress was not unique in its field. The TTAB also held that the trade dress was a mere refinement of the earlier-used Playboy bunny costume. On appeal, the Federal Circuit faulted certain of the TTAB’s findings related to the inherent distinctiveness of adult-entertainment costumes, but affirmed based primarily on the Playboy bunny-costume evidence.
Chippendales USA, Inc. (“Applicant”) applied to register its trade dress consisting of wrist cuffs and a bowtie collar without a shirt (“Cuffs & Collar”) for adult-entertainment services. The PTO determined that Applicant was entitled to registration based only on acquired distinctiveness, and Applicant thereafter obtained a registration on that basis. Applicant subsequently filed a second application seeking registration for the Cuffs & Collar trade dress based on inherent distinctiveness. The PTO again refused registration and, on appeal, the TTAB held that the Cuffs & Collar trade dress was not inherently distinctive based on, among other things, its common basic shape design, the fact that it is not unusual for exotic dancers to wear costumes that are revealing and provocative, and the fact that the Cuffs & Collar mark was not unique in its field. The TTAB concluded, alternatively, 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. Applicant appealed to the Federal Circuit.
The Federal Circuit first considered whether the fact that Applicant already owned a registration for the Cuffs & Collar mark based on acquired distinctiveness mooted this proceeding. It found that it did not because, although registrations secured through inherent and acquired distinctiveness have equal standing on the Register, whether a particular mark is inherently distinctive may affect the scope of protection accorded in an infringement proceeding, which created a live controversy in this proceeding.
The Federal Circuit then explained that the four-part Seabrook test is the standard for determining the inherent distinctiveness of trade dress, namely, (1) whether it was a “common” basic shape or design, (2) whether it was [non]unique or unusual in the particular field, (3) whether it was “a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods,” or (4) whether it was capable of creating a commercial impression distinct from the accompanying words. Before applying the Seabrook test, the court agreed with the PTO that the proper time for measuring inherent distinctiveness is at the time of registration (not when the mark is first used). However, the court noted that the TTAB had erred by stating that “[t] heoretically, if a mark was inherently distinctive when applicant began use, it remained so thereafter.” The court explained that a term that was once inherently distinctive may lose its distinguishing characteristics over time.
Turning to the Seabrook test, the court held that the TTAB had appropriately considered evidence of the current situation as well as evidence of earlier uses. However, the court found that the TTAB erred in suggesting that any costume in the context of adult-entertainment would lack inherent distinctiveness. Specifically, the court found that just 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. Rather, each such trademark must be evaluated individually under Seabrook.
The court found that the TTAB did not err, however, in concluding that the Cuffs & Collar mark was not inherently distinctive under the Seabrook test. The court found that the first and fourth Seabrook factors were inapplicable, and that it did not need to consider whether the second Seabrook factor was applicable. Regarding the third Seabrook factor—whether the Cuffs & Collar mark was a mere variant or refinement of a particular costume—the court agreed with the TTAB that this test had been satisfied. Specifically, the court found that the use of the Playboy bunny mark (which includes cuffs and collar together with bunny ears) constituted substantial evidence supporting the TTAB’s determination that the Cuffs & Collar mark was not inherently distinctive because, among other things, it was widely used for almost twenty years before Applicant’s first use of its trade dress, the Cuffs & Collar trade dress was very similar to the Playboy bunny costume, and the mark was within the relevant field of use.
Applicant argued that it was unfair for the TTAB to raise the issue of the Playboy bunny costume sua sponte, preventing Applicant from having the opportunity to respond, but the court disagreed based on the fact that it was Applicant’s own expert who provided an article attached to his affidavit stating that the Cuffs & Collar was inspired by the bunny suit. Further, the court found that it could take judicial notice of trademark registrations covering the Playboy bunny, under Fed. R. Evid. 201(c), as it determined that the registration documents were “capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned.”
Finally, the court rejected Applicant’s argument that Seabrook should be overruled because the Supreme Court’s decision in Wal-Mart Stores, Inc. v. Samara Bros. was fundamentally at odds with that decision. The court found that nothing in Wal-Mart questioned or undermined the Seabrook test, and the Supreme Court did not express any disagreement with Seabrook. Thus, the court was bound by Seabrook and concluded that the TTAB’s decision that the Cuffs & Collar trade dress was not inherently distinctive was supported by substantial evidence.
Costumes will not satisfy the Seabrook test for inherently distinctive trade dress where they constitute “a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods,” such as the mere refinement on the Playboy bunny costume in this case. Also notable is the fact that it appears that it was evidence submitted by Applicant’s own expert that may have led the court to its key finding, in support of which the court also relied on judicially noticed trademark registrations that were evidently not in the record.