Intellectual Property: Timberland boots denied Lanham Act protection

Where the manufacturer of Timberland boots argued that certain features were protected under the Lanham Act, but the features had not acquired a distinctive meaning, the application was denied.

Background

TBL Licensing LLC tried to register certain features from the design of its popular Timberland boot under the Lanham Act as trade dress. Concluding the submitted elements of the boot design is not distinctive, the United States Patent and Trademark Office, or USPTO, refused to register it. TBL turned to federal district court, which agreed granted the USPTO’s motion for summary judgment, reasoning that the boot design is not distinctive and adding that it is impermissibly functional.

Functionality

This circuit looks to four factors to assess functionality: “(1) the existence of utility patents disclosing the utilitarian advantages of a design; (2) advertising focusing on the utilitarian advantages of a design; (3) the availability of functionally equivalent alternative designs which competitors may use; and (4) facts indicating that a design results in a comparatively simple or cheap method of manufacturing the product.”

The district court split the applied-for design into eight elements: “collar, two-tone sole, lug soles, hourglass heel counter, quad stitching, shape of the vamp stitching, hexagonal eyelets, and bulbous toe box.” Focusing on only the first two of the four functionality factors, the district court pointed to utility patents and advertisements that it determined described the functional benefits of each element in turn. After combining the elements, the district court concluded that the boot design is functional.

TBL argues that, despite the district court’s concluding comments about the “applied-for boot design as a whole,” the court failed to meaningfully consider the design “as a whole,” as required by law. Second, even if the district ultimately analyzed the design as a whole, TBL contends that it erred in skipping the third and fourth functionality factors.

But even if the district court failed to analyze the design as a whole or improperly strayed from the design TBL drew and described in its application, the district court did not clearly err in finding that the limited design TBL sought to register, as defined in its application, has not acquired a distinctive meaning leading consumers to associate the design with TBL. On that ground alone, the applied-for design could not be registered as trade dress.

Distinctiveness

A party seeking to establish secondary meaning in a product design bears a “formidable burden of proof.” Reflecting that “rigorous evidentiary standard,” this circuit assesses secondary meaning through many factors: (1) advertising expenditures; (2) consumer studies linking the mark to a source; (3) record of sales success; (4) unsolicited media coverage of the product; (5) attempts to plagiarize the mark and (6) the length and exclusivity of the mark’s use.

Applying these factors, the district court found that TBL failed to carry its formidable burden of proving that the design features of the boot that it sought to register have acquired secondary meaning. It did not clearly err in reaching that finding. Without a viable consumer survey, TBL lacks direct evidence of secondary meaning. Resorting to circumstantial evidence, TBL has not shown that its sales or advertising expenditures have translated into consumer recognition of the design elements it sought to register.

Indeed, portrayals of TBL’s boot in marketing materials and the media tend to highlight features not claimed in TBL’s current application. The many similar looking products in the boot market do not show that competitors copied TBL’s design intending to confuse consumers. Rather, those lookalikes undermine TBL’s attempt to show that the design it sought to register has come to be “uniquely associated” with Timberland.

At bottom, TBL failed to show that the combination of features it specified in its registration application — the outer ankle collar, the two-tone color and etching on the side of the boot’s sole, the hourglass rear heel panel, the quad stitching along the boot’s side and tongue area, the hexagonal eyelets for the boot’s laces and the boot’s bulbous toe box — leads consumers to associate the boot with Timberland alone. As such, the district court did not clearly err in finding that the design TBL sought to register has not acquired secondary meaning.

Affirmed.

TBL Licensing LLC v. Vidal, Case No. 23-1150, Apr. 15, 2024. 4th Cir. (Quattlebaum), from EDVA at Alexandria (Hilton). Elizabeth D. Ferrill for Appellant. Christina J. Hieber for Appellee. VLW 024-2-108. 33 pp.