Virginia Lawyers Weekly VA Lawyers Weekly
Where the company that makes Timberland boots argued that eight specified features of one of its boots qualified for a trademark, but the evidence showed that the features were functional, the boots were ineligible for registration under the Lanham Act.
Background
TBL Licensing LLC filed a trademark application, seeking registration of eight specified features of one of its boots as a trademark. The United States Patent and Trademark Office, or USPTO, refused registration on two grounds: (1) that the alleged trade dress is functional and therefore ineligible for registration under Lanham Act and (2) that TBL failed to prove acquired distinctiveness under Lanham Act because consumers primarily recognize the eight specified features as features of the boot, not as source indicators.
The USPTO’s Trademark Trial and Appeal Board, or TTAB, affirmed the refusal to register on the ground that TBL failed to prove acquired distinctiveness. Because that affirmance alone disqualified the alleged trade dress from registration, the TTAB opted not to reach the issue of functionality.
TBL then filed this suit. Now before the court are cross motions for summary judgment. The parties have agreed that if this court determines that there are disputed issues of fact, it may resolve them based on the record. Thus, this case is, in substance, being submitted for trial on a stipulated record.
Analysis
Under the Lanham Act, trade dress cannot be registered if it is functional as a whole. That precedent and practice strike a balance between trademark law and patent law: the former protects reputation, potentially in perpetuity, because registered trademarks do not expire as long as they continue to designate the source; the latter promotes innovation with a patent grant for a limited term of 20 years from the date of issuance. Thus, even if functional trade dress has acquired distinctiveness, the Lanham Act bars registration because the matter should be protected, if at all, by patent law rather than trademark law.
The Fourth Circuit weighs four factors to assess functionality: (1) the existence of utility patents disclosing the applied-for design, (2) advertisements and other promotional materials touting the functional benefit of the design, (3) the existence of alternative designs and (4) any effect on the manufacturing or quality of the product. A strong showing on the first two factors compels a finding of functionality, because a prior patent has vital significance in resolving the trade dress claim, constituting strong evidence that the features therein claimed are functional.
The evidentiary record before the agency, and additional evidence in this court, presents a case that TBL’s applied-for design is functional. Utility patents disclose, and some claim, the features of TBL’s applied-for design, and TBL’s own advertising touts the functional benefits the features. Evidence as to the first two factors proves this case does not involve any ornamental, incidental or arbitrary aspect of boots. Each of the claimed features is common in the industry and has been for decades.
At least one utility patent discloses each feature of the boot design, and some patents claim the features. Most of the issued patents cited in this opinion have expired, meaning that the disclosed features are in the public domain. To conclude that TBL can strip the public’s right to copy and benefit from these features today would be antithetical to the pro-competitive objectives of both trademark and patent law.
When TBL’s advertisements do mention any of the applied-for features, they mention the functional benefits, such as waterproofing and durability. TBL has failed to link-up its large sales and advertising numbers with the one thing it needs to prove: that amidst a sea of similar-looking boots, consumers nevertheless can identify TBL’s product just by the eight specified product features irrespective of any other marks used on or with the product.
Over decades of intense promotional activity, TBL has advertised its products using many different themes, but never did it advertise that consumers should look for any of the things it now claims constitute protectable trade dress as source-identifiers, such as eyelets, lug soles, the collar and so on, let alone all the elements together. Finally, while TBL offers a survey and marketing report, they suffer from deficiencies that fail to prove secondary meaning.
Plaintiff’s motion for summary judgment denied. Defendant’s motion for summary judgment granted.
TBL Licensing LLC v. Vidal, Case No. 1:21-cv-681, Dec. 8, 2022. EDVA at Alexandria (Hilton). VLW 022-3-550. 25 pp.
