The Cuffs & Collar trade dress of Chippendales had been previously registered because it had acquired distinctiveness in the market place. However, in 2005, Chippendales filed a second application for the same mark, this time seeking to register the Cuffs & Collar trade dress as inherently distinctive. Chippendales was initially refused by the Trademark Trial and Appeal Board (TTAB).
On appeal, the U.S. Court of Appeals for the Federal Circuit first determined the Chippendale costume is a part of product packaging (here the product being adult entertainment services) rather than a product design. It was a vital distinction because product designs are never inherently distinctive. (Wal-Mart v. Samara Bros)
Additionally, the Federal Circuit concluded that since a registration under acquired distinctiveness would provide wider protection, the second application for the same mark is not barred as being moot.
The Federal Circuit further held that a costume in the adult live entertainment industry could enjoy the status of the inherently distinctive mark if the costume passes the test set forth in Seabrook Foods Inc. v. Bar-Well Foods Ltd. Here the question of inherent distinctiveness was contingent on the third factor—whether the Cuffs & Collar was a mere refinement of or a variation on existing trade dress within the relevant field of use.
When comparing the Chippendale costume to a Playboy Bunny costume, it’s easy to see that both the costumes are similar in respect of wrist cuffs and bowtie collar. The Playboy Bunny costumes were worn by waitresses in Playboy Clubs. Similarly, the Chippendale costumes are worn by waitresses and bartenders in Chippendale’s Clubs. (Unhelpfully, Chippendale’s expert blurted out that their trade dress was inspired by the Playboy Bunny costumes.)
In deciding against Chippendales, the Federal Circuit agreed with TTAB’s decision that the Cuffs and Collar trade dress is a mere variant or refinement of the pervasive Playboy Bunny suit that had been in use for almost 20 years before Chippendales’. Hence, Chippendales failed the third element of mere refinement test under Seabrook test.
Take away: The Trademark Office is now permitted to consider dual registration of the same trademark. So now a trademark holder could possibly obtain dual protection for the same mark by obtaining a registration first under acquired distinctiveness and then under inherent distinctiveness.