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Boot’s functional features don’t suggest single source

Person hiking in boots

Timberland boots have an iconic look that has been copied by numerous competitors.

That didn’t stop a federal court from upholding the USPTO’s denial of an application seeking registration of several specific features of one of its boots as a trademark.

TBL Licensing LLC argued its alleged trade dress satisfied the requirements for registrability — it’s not functional and has gained distinctiveness.

Senior U.S. District Judge Claude M. Hilton of the Eastern District of Virginia disagreed, saying the boot’s design features were functional, similar to earlier patented designs and didn’t indicate a unique source.

Timberland “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,” the judge explained.

Hilton said granting Timberland’s trademark “would be antithetical to the pro competitive objectives of both trademark and patent law.”

The opinion is TBL Licensing LLC v. Vidal (VLW 022-3-550).

Trademark refusal

Timberland filed an application with the United States Patent and Trademark Office, or USPTO, to register eight specified features of one of its boots as a trademarked design.

The USPTO refused, finding that the features were functional and hadn’t acquired distinctiveness as source indicators.

After losing on administrative appeal, Timberland filed suit and the parties moved for summary judgment.

Common features

Timberland alleged that eight distinct features make its boot design trademarkable: a padded collar, a two-tone multi-hardness sole, a Vibram-style lug sole, an hourglass heel counter, quad-stitching, U-shaped vamp stitching, a hexagonal eyelet, and a bulbous toe box.

After comparing those features to designs from earlier utility patents, some of which had expired and were subject to fair use, Hilton said the evidentiary record presents a case that Timberland’s applied-for design is functional.

“Under Lanham Act § 2 (e) (5), trade dress cannot be registered if it is functional as a whole,” he wrote. “Section 2 (e) (5) legislatively adopts longstanding judicial precedent and USPTO practice barring the registration of functional matter. That precedent and practice strike a balance between trademark law and patent law: the former protects reputation, potentially in perpetuity, because the 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 ….”

As such, even if functional trade dress has gained distinctiveness, the Lanham Act prohibits registration because the matter should be protected, if at all, not by trademark law, but by patent law.

The 4th U.S. Circuit Court of Appeals uses a four-factor test 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,” Hilton added.

“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 judge wrote.

Also, each of the claimed features has been common in the industry for decades and at least one utility patent discloses each feature of the boot design, and some patents claim the features, Hilton added.

As most of the utility patents are now public domain, Hilton said to conclude that Timberland “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.”

In fact, Timberland’s advertising hypes the design’s features to do what they are supposed to in a good boot: “they make it comfortable, they make it durable, they make it waterproof, and they make it suitable for its intended uses, including hiking … and pursuing some work projects for which toe protection is needed,” the judge said.

Acquired distinctiveness

Next, Hilton considered whether the features had secondary meaning, or an acquired distinctiveness.

“The Fourth Circuit has made clear that secondary meaning entails a rigorous evidentiary standard,” Hilton said. “Such a standard is hard to meet in product design cases because normally it is difficult to parse apart how much of sales success is due to the inherent desirability of the product. That in turn makes it hard to determine how much, if any, of the product’s success is due to consumers seeing the design as a source identifier.”

And when several competitors use a design that one company wants for its own, customers won’t see the design as suggesting a single source of goods. Thus, “[t]eaching consumers to ‘look for’ whatever design feature said to be a source identifier is a critical form of advertising in product design trademark cases,” Hilton wrote.

“Despite almost 50 years of advertising, TBL has not produced any evidence that it engaged in ‘look for’ advertising,” the judge pointed out. “When TBL’s advertisements do mention any of the applied-for features, they mention the functional benefits, such as waterproofing and durability.”

Hilton said Timberland’s existing trademarks allowed consumers to recognize their boots long before looking closely to see if they have all eight claimed features.

“The saturation of the market with look-alike boots using many of the same functional features is fatal to TBL’s claim that consumers look for these features to identify TBL’s boots and distinguish them from competing boots,” the judge explained. “TBL itself acknowledges over and over in its advertisements that there are many imitators. This is at odds with the principal of secondary meaning, which requires that a mark or dress has come through use to be uniquely associated with a specific source.”

Hilton concluded that Timberland didn’t carry its burden to prove that the eight features are nonfunctional and that customers recognize them as a unique marker of the source of the boots.