Timberland again refused trademark for design features

The 4th U.S. Circuit Court of Appeals refused to overturn a lower court’s finding that the manufacturer of Timberland boots, TBL Licensing, failed to prove that certain features had acquired a distinctive meaning to warrant trademark protection under the Lanham Act.

U.S. Circuit Judge A. Marvin Quattlebaum Jr. said TBL fell short of meeting the “formidable burden of proof” and “rigorous evidentiary standard” with its claim that the district court failed to meaningfully consider the boot’s design as a whole or give enough weight to circumstantial evidence.

“Without a viable consumer survey, TBL lacks direct evidence of secondary meaning,” he wrote. “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.”

U.S. Circuit Judges Roger L. Gregory and DeAndrea Gist Benjamin joined Quattlebaum in affirming TBL Licensing LLC v. Vidal (VLW 024-2-108).

Trademark refusal

The United States Patent and Trademark Office, or USPTO, rejected TBL’s application to register eight specified features of one of its boots as a trademarked design, finding that the features were functional and hadn’t acquired distinctiveness as source indicators.

U.S. District Judge Claude M. Hilton of the Eastern District of Virginia agreed with the USPTO. Virginia Lawyers Weekly reported on that opinion in “Boot’s functional features don’t suggest single source.” TBL appealed.

‘Limited design’

A product design cannot be registered as a trade dress if it “comprises any matter that, as a whole, is functional,” and a feature is functional if it is “essential to the use or purpose of the article or if it affects the cost or quality of the article,” the U.S. Supreme Court said in TrafFix Devices, Inc. v. Mktg. Displays, Inc.

“More simply, a feature is functional if ‘it is the reason the device works,’” Quattlebaum wrote.

With TBL’s design split into eight elements, the district court focused on two of four factors to assess functionality — the existence of utility patents disclosing the utilitarian advantages of a design and advertising focused on the utilitarian advantages of a design.

TBL argued that the district court failed to meaningfully consider the design as a whole and erred by skipping the third and fourth functionality factors.

“However, a sufficiently strong showing on the first two factors — utility patents and advertising — compels a finding of functionality, without requiring a court to delve into the remaining factors,” Quattlebaum explained.

And even if the district court failed to analyze the design as a whole or improperly strayed from it, the district court did not clearly err in finding that the “limited design” hadn’t acquired a distinctive meaning leading consumers to associate the design with Timberland.

Rigorous standard

A mark typically gains distinctiveness if it has developed secondary meaning, which happens when, in the public’s mind, “the primary significance of a [mark] is to identify the source of the product rather than the product itself,” Quattlebaum said, looking to Wal-Mart Stores, Inc. v. Samara Bros.

The Fourth Circuit held in Tools USA & Equip. Co. v. Champ Frame Straightening Equip, Inc. that the public “need not identify the name of the manufacturer that produces the product,” rather it must perceive “that the product emanates from a single source.”

Quattlebaum said that holding was critical.

“Some consumers might recognize the whole boot, unclaimed features and all, as a Timberland,” he explained. “But TBL did not undertake to register the entire boot.”

Describing it as a “formidable burden of proof” and a “rigorous evidentiary standard,” the judge said the court assesses secondary meaning through advertising expenditures, consumer studies linking the mark to a source, sales success, unsolicited media coverage of the product, attempts to plagiarize the mark and the length and exclusivity of the mark’s use.

Quattlebaum credited the district court’s assessment that TBL’s survey “used features of the boot’s design that were not part of the application to improperly suggest the boot was a Timberland.” The survey also asked respondents to name a single company.

“Such a nudge would matter because if the public associated the claimed design features with more than just Timberland, the design did not acquire a distinctive secondary meaning,” the judge said.

Circumstantial evidence

Rather than challenge that finding, TBL argued that the district court didn’t give enough weight to circumstantial evidence of secondary meaning, beginning with advertising expenditures.

“Expenditures themselves do not, from a legal standpoint, establish secondary meaning without a showing that they translated into what counts — consumers associating the claimed design features with a single source,” Quattlebaum wrote.

On the contrary, the judge said advertising proves less if it doesn’t highlight in some way the claimed design features over other unclaimed attributes.

“If advertising calls no special attention to the features of the product’s design claimed to have secondary meaning, such evidence generally carries less weight,” he wrote. “Even so, less talk may be required to showcase to consumers a product’s more prominent features, which to an extent speak for themselves.”

Here, TBL’s advertisements depicted the entire boot rather than calling attention to the design features in the application.

The district court found that TBL’s sales success didn’t show whether customers bought the boots for the features it sought to register.

“Although our court has long listed sales success as one of the relevant factors for assessing secondary meaning of the trademarks in general, when it comes to product designs, we agree with our sister circuits that a product’s sales success, considered in a vacuum, typically is less helpful to showing whether the product’s design has acquired secondary meaning,” Quattlebaum said.

Similarly, TBL’s media references didn’t show that its design features had acquired secondary meaning. They included features that weren’t part of — but were more distinctive than — those listed in its trade dress application.

Attempts by others to plagiarize the design also didn’t evince its distinctiveness; TBL failed to produce evidence of intentional plagiarism.

“[U]nder the law of secondary meaning, it matters why one imitates,” Quattlebaum wrote. “Imitation of design features only to profit from the design’s functionality does not establish secondary meaning. Imitation suggests secondary meaning only if it is intended to deceive customers about the product’s source.”

No secondary meaning

Quattlebaum acknowledged that distinctiveness is an “intuitive” and “heavily fact-dependent concept.”

Here, TBL lacked a viable consumer survey with direct evidence of secondary meaning and its circumstantial evidence didn’t show consumer recognition of the specific design elements.

“Indeed, portrayals of TBL’s boot in marketing materials and the media tend to highlight features not claimed in TBL’s current application,” the judge wrote.

Several lookalike products in the market don’t show that TBL’s competitors copied the design with the intent to confuse buyers. Instead, those products undermine TBL’s bid to show that the design it sought to register has come to be “uniquely associated” with TBL.

“To find TBL failed to discharge its burden, the district court was not required to assess the market shares of the myriad of lookalike boots,” Quattlebaum said. “Nor was the district court obligated to run through each boot one-by-one and discuss how it resembled the applied-for TBL design.”

Because the record didn’t provide “a definite and firm conviction that a mistake has been made,” Quattlebaum concluded that the district court did not clearly err in finding that the design TBL sought to register had not acquired secondary meaning.