Suede Timbs on My Feet Make [Nas’s] Cipher Complete, but Timberland’s Section 2(f) Evidence Was Slacking and Acquired Distinctiveness Was Lacking

The TTAB has affirmed a refusal to register the trade dress configuration mark (see below) of the popular Timberland boot, a wardrobe staple in hip-hop culture (see The World is Yours by Nas), stating the configuration failed to attain acquired distinctiveness under Section 2(f) of the Trademark Act.  In re TBL Licensing LLC, Serial No. 86634819 (TTAB April 2, 2021).

Although product designs may not be inherently distinctive, a product design that provides no real utilitarian advantages to the user, but is one of many equally feasible, efficient and competitive designs, may be registrable upon a showing of acquired distinctiveness pursuant to Section 2(f) of the Trademark Act.” Id. at 6.

During examination, amongst other grounds, the Examiner refused registration on the ground that  Applicant’s mark is a “product configuration comprising non-distinctive features under Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§ 1051-52, 1127, for which Applicant’s evidence of acquired distinctiveness under Section 2(f), 15 U.S.C. § 1052(f) is insufficient. The Board affirmed the refusal.

In order to determine whether the boot had acquired distinctiveness, the Board turned to the Converse factors of (1) association of the trademark with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark.”

Factor 1:  Association of the trademark with a particular source by actual purchasers

While direct consumer testimony can be relevant to establish acquired distinctiveness, the Board assigned little probative value to the declarations of Timberland boot retailers because the declarants were not the “average, or end, customer” of the boots.  Rather, the retailers already knew the source of the boots.  The multiple excerpts of various publications were also of little value since the excerpts included links to purchase the boots and identified the boots as Timberland boots, rather than directing potential consumers to identify Applicant’s trade dress as the source of Timberland boots.

Factor 2:  Length, degree, and exclusivity of use

Although Timberland alleged the exact trade dress/product configuration was made for more than 30 years, the Board found that the overall shape and appearance of other third-party work-style boots “are quite similar to the boot trade dress Applicant seeks to register” and assigned little value to this factor.  The Board also noted that only in one instance did Timberland seek to stop a third-party from selling a supposedly infringing boot.

Factors 3 and 4:  Amount and manner of advertising; Amount of sales and number of customers

Although Timberland showed that it had impressive sales figures and advertisement efforts, none of the advertisements did the following: “Highlight the product design features Applicant seeks to register or promote those collective features as a source indicator. Rather, the record advertisements consistently show a picture of Applicant’s lace-up boots primarily with the tree logo visible and with the word mark TIMBERLAND and/or the tree logo design prominently featured and/or the ‘original yellow’ color touted.”  Thus, the Board assigned little probative values to these factors.

Factor 5:  Intentional copying

There was “no evidence that any third-party copying of one or more elements of Applicant trade dress was intentional, or even if so, was due to an intent to confuse customers as to the source of the products.”

Factor 6:  Unsolicited media coverage of the product embodying the mark

Lastly, although there were numerous examples of unsolicited media coverage, the coverage did not focus on the elements of Timberland’s trade dress.

This case demonstrates that applicants face a heavy burden if they wish to obtain a registration for a product configuration and stop others from using similar configurations. In order to prove that their product configuration has acquired distinctiveness and is capable of protection, they must produce evidence that clearly demonstrates consumer awareness of the source of the product configuration.  This evidence will ideally include properly designed surveys of the ultimate consumer base showing that they associate the product configuration with a specific maker. In addition, the applicant should develop an extensive “look for” marketing campaign that advertises the product configuration.  In many cases, the Patent and Trademark Office will want to see that the applicant has been selling and advertising the product configuration for at least five years before it will issue a registration.

Editor: Catherine Holland