Clothing Configuration Not Inherently Distinctive

In In re Joanne Slokevage (Fed. Cir. March 21, 2006), the court considered whether the mark shown below is product design and therefore not inherently distinctive:

The application described the mark as a "configuration" that consists of a label with the words "FLASH DARE!" in a V-shaped background, and cut-out areas located on each side of the label. The cut-out areas consist of a hole in a garment and a flap attached to the garment with a closure device.

The trademark examiner initially refused registration of the proposed mark on the ground that it constituted a clothing configuration that is not inherently distinctive. The examiner then afforded Slokevage the opportunity to submit evidence of acquired distinctiveness or to disclaim the design elements of the configuration, but Slokevage chose not to submit evidence of acquired distinctiveness or to disclaim the design elements. Rather, she argued that the trade dress was inherently distinctive. The Board affirmed the examiner's refusal.

According to Circuit Judge Lourie writing for the Federal Circuit,

We agree with the Board that Slokevage’s trade dress constitutes product design and therefore cannot be inherently distinctive. . . .

In order for an applicant to gain protection for trade dress, the trade
dress must be distinctive, either inherently or by acquiring distinctiveness.
Two-Pesos, 505 U.S. at 769. Trade dress is inherently distinctive when its
"intrinsic nature serves to identify a particular source of a product," and, in
contrast, acquires distinctiveness when the public comes to associate the
product with its source. Id. at 768-769. The Supreme Court has determined that
certain types of trade dress, in particular, product design and color, can never
be inherently distinctive. See Mart, 529 U.S. at 212 (product design is not
inherently distinctive).

Directly relevant to our discussion of product design is the Court’s discussion in Wal-Mart. That case addressed whether product design could ever be inherently distinctive and answered the question in the negative. The trade dress in Wal-Mart involved children’s clothing decorated with "hearts, flowers, fruits, and the like." 529 U.S. at 207. The Court labeled that trade dress product design and ultimately concluded that product design is entitled to protection only if it has acquired distinctiveness. Id. at 216. The Court reasoned that "in the case of product design . . . we think consumer predisposition to equate the feature with the source does not exist" and stated that "even the most unusual of product designs—such as a cocktail shaker shaped like a penguin—is intended not to identify the source, but to render the product itself more useful or more appealing." Id. at 213. Thus, the Court established a bright-line rule—product design cannot be inherently distinctive, and always requires proof of acquired distinctiveness to be protected. The Court did not
recite the factors that distinguish between product packaging and product design
trade dress, but stated that in "close cases" courts should classify the trade
dress as product design. Id. at 215.

Both parties agree that if we determine that the trade dress at issue
is product design, then it cannot be inherently distinctive under the decision
in Wal-Mart. The issue pertinent to this appeal, however, is whether Slokevage’s
proposed trade dress is product design. Although the decision in Wal-Mart does
not expressly address the issue of what constitutes product design, it is
informative to this case because it provides examples of trade dress that are
product design. The Court observed that a "cocktail shaker shaped like a
penguin" is product design and that the trade dress at issue in that case, "a
line of spring/summer one-piece seersucker outfits decorated with appliques of
hearts, flowers, fruits, and the like" is product design. Wal-Mart, 529 U.S. at
207, 213. These examples demonstrate that product design can consist of design
features incorporated into a product. Slokevage urges that her trade dress is
not product design because it does not alter the entire product but is more akin
to a label being placed on a garment. We do not agree. The holes and flaps
portion are part of the design of the clothing—the cut-out area is not merely a
design placed on top of a garment, but is a design incorporated into the garment
itself. Moreover, while Slokevage urges that product design trade dress must
implicate the entire product, we do not find support for that proposition. Just
as the product design in Wal-Mart consisted of certain design features featured
on clothing, Slokevage’s trade dress similarly consists of design features,
holes and flaps, featured in clothing, revealing the similarity between the two
types of design.

In addition, the reasoning behind the Supreme Court’s determination
that product design cannot be inherently distinctive is also instructive to our
case. The Court reasoned that, unlike a trademark whose "predominant function"
remains source identification, product design often serves other functions, such
as rendering the "product itself more useful or more appealing." Wal-Mart, 529
U.S. at 212, 213. The design at issue here can serve such utilitarian and
aesthetic functions. For example, consumers may purchase Slokevage’s clothing
for the utilitarian purpose of wearing a garment or because they find the
appearance of the garment particularly desirable. Consistent with the Supreme
Court’s analysis in Wal-Mart, in such cases when the purchase implicates a
utilitarian or aesthetic purpose, rather than a source-identifying function, it
is appropriate to require proof of acquired distinctiveness.

Finally, the Court in Wal-Mart provided guidance on how to address
trade dress cases that may be difficult to classify: "To the extent that there
are close cases, we believe that courts should err on the side of caution and
classify ambiguous trade dress as product design, thereby requiring secondary
meaning." 529 U.S. at 215. Even if this were a close case, therefore, we must
follow that precedent and classify the trade dress as product design. We thus
agree with the Board that Slokevage’s trade dress is product design and
therefore that she must prove acquired distinctiveness in order for her trade
dress mark to be registered.

Although the case involved only an application to register a mark for the overall configuration of the design, the applicant had already received protection for various aspects of the trade dress configuration. For example, she received a design patent for the cut-out area design. She also registered on the Supplemental Register a design mark for the cut-out area. In addition, she registered the word mark “FLASH DARE!” on the Principal Register.

When required to disclaim the holes flaps, the applicant also unsuccessfully tried to argue that the design was unitary. According to the Federal Circuit:

We agree with the PTO that substantial evidence supports the Board’s finding
that the mark is not unitary. The display of elements in the drawing of the
trade dress, the applicant’s earlier registration of the words "FLASH DARE!,"
and the applicant’s design patent on the cut-out area are evidence that
Slokevage’s trade dress is not unitary. Moreover, trade dress, by its nature,
contains distinct elements and is characterized as the combination of various
elements to create an overall impression. While in some cases the elements may
be so combined as to be inseparable, that is not the case here, as shown by the
separate locations of the words and design elements and the separate
registration of the elements.