TIMBERLAND'S PRODUCT DESIGN TRADEMARK APPLICATION GIVEN THE BOOT

Introduction

Registration of a proposed trademark or service mark always requires that the proposed mark passes the USPTO's "no likelihood of confusion" analysis. Additionally the proposed mark must not be merely descriptive of the goods/services under Section 2(e). For merely descriptive marks that are not likely confusing with an existing registered mark, the applicant may instead seek registration under Section 2(f) of the Lanham Act by showing that the mark has acquired distinctiveness in the minds of consumers. This means that the consumer has come to identify the mark with the provider or source of the underlying goods and services. The 2(f) hurdle is not an easy hurdle to clear especially where the proposed mark involves trade dress or a product configuration. Evidence, e.g., well-designed surveys, must be provided to establish that the mark has indeed acquired distinctiveness in the minds of consumers. Merely saying so is insufficient.

Seldom does a product configuration trademark application clear the Section 2(f) hurdle as recent decisions involving the well-known work/hiking boots sold by Timberland through TBL, LLC again demonstrate. Even if the product design has acquired distinctiveness, the product design's characteristics for which trademark production is sought also must not contribute to the product's functionality under Section 2(e)(5). This article discusses: 1) the Trademark Trial & Appeal Board's (TTAB) April 2, 2021 affirmance of the examining attorney's rejection of Timberland's product configuration mark under Section 2(f) on only lack of distinctiveness grounds (the TTAB did not address the product design's functionality); and 2) the December 8, 2022 affirmance of the earlier TTAB decision by the U.S. District Court of the E.D. of Virginia on both lack of distinctiveness and functionality grounds.

The TTAB's Decision

In affirming the refusal to register the mark, the TTAB agreed with the examining attorney that the proposed configuration mark (drawing above) for "footwear, namely, lace-up boots" lacked acquired distinctiveness.???In TBL Licensing, LLC (TTAB, April 2, 2021).?

Timberland's boot design at issue included a "bulbous toe box," a "tube-shaped ankle collar," a two-toned outsole," an hourglass-shaped rear heel panel, and other elements. Product configurations cannot, by definition, be inherently distinctive for trademark registration purposes, but non-functional product designs may be registered if they meet the requirements for establishing acquired distinctiveness.?That is, the aspects of the product design sought to be registered must have no function in and of themselves.? The TTAB held that the product configuration had not reached acquired distinctiveness and could not be registered. Its opinion did not address the non-functionality requirement.

As with any Section 2(f) application, the applicant (TBL) had the burden to prove that "the product design sought to be registered is perceived by relevant consumers not just as the product (or features of the product), but as identifying the producer or source of the product."

Applicants face a heavy burden to establish distinctiveness and register trade dress.?Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549 (TTAB 2009);?see also Duraco Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1453, 32 USPQ2d 1724, 1742 (3d Cir. 1994) (“secondary meaning in a product configuration case will generally not be easy to establish”).?*** Further, in cases of trade dress or product design, the evidence provided to establish acquired distinctiveness must relate to the promotion and recognition of the specific configuration embodied in the proposed mark and not to the goods in general.?

In reaching its decision, the TTAB relied on the?Converse?factors to assess TBL's evidence:?“(1) association of the trade[mark] 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.”?In re SnoWizard, Inc., 129 USPQ2d at 1005 (TTAB 2018) (quoting?Converse, Inc. v. Int’l Trade Comm’n, 907 F.3d 1361, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018)).

Regarding Converse factor no. 1, the Board accorded little probative value to two declarations from retailers for Timberland's boots, since the declarants are not ordinary consumers: they already know the source of the goods. Excerpts from various publications likewise were of little import since they all identified the boots as Timberland boots and do not direct the reader to any claimed trade dress. The proper survey approach for establishing acquired distinctiveness in the minds of consumers is a well-designed survey, not the reliance on the product's sellers or promotional materials.

As to the Converse factor no. 2, Timberland claimed that it had made this boot since 1973 except for the two-toned sole introduced in 1988.?Thus it demonstrated continuous use of the claimed design for thirty years. However, the TTAB found that this use was not substantially exclusive since the overall shape and appearance of third-party work-style boots "are quite similar to the boot trade dress Applicant seeks to register." In only one instance did Timberland seek to stop a third-party from selling a supposedly infringing boot.

Regarding Converse factors nos. 3 and 4, the TTAB noted that Timberland had sold more than 15 million pairs of boots over the last 15 years, amounting to at least $1.3 billion in revenue. It spent $1.5 million on marketing and advertising its lace-up boots bearing the applied-for trade dress from 2011-2016. However, the TTAB concluded that none of the advertisements "highlight[ed] the product design features Applicant seeks to register or promote[d] 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."

The TTAB agreed with TBL that "look-for" advertising is not required in order to prove acquired distinctiveness, but there was "little evidence that the features which Applicant claims as its mark – the bulbous toe box, ankle collar, outsole shape and color, rear heel panel, vamp from back to front, and eyelets – have been advertised, or are recognized, individually or collectively as source indicators for the identified lace-up boots."

In these circumstances, where Applicant’s advertising consistently includes the TIMBERLAND word mark and tree logo design and often touts the “original yellow” color, the absence of advertising that points out the claimed features of Applicant’s product design drastically diminishes the probative value of Applicant’s advertising expenditures and sales as contributing to any acquired distinctiveness of its product design.

Regarding Converse?factor no. 5, TBL alleged that competitors have "slavishly copied" its design, but 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."

Finally, regarding Converse factor no. 6, although there was considerable evidence of unsolicited media coverage, the TTAB concluded that this coverage does not focus on the elements Timberland seeks to register. "Instead, much of the record media coverage highlights the classic 'wheat' or 'yellow' colored boot, and the presence of the Timberland tree logo burned into the side of the leather upper of Applicant’s boots, of which the Hypebeast article opines '"made the boot an icon.'" Unfortunately for Timberland, these characteristics were not the product design characteristics for which its was seeking trademark protection in its trademark application.

The District Court's Opinion

The U.S. District Court for the Eastern District of Virginia upheld the TTAB's decision, affirming a refusal to register certain features of Timberland's boot design on the ground that the proposed mark for "footwear, namely, lace-up boots" lacked acquired distinctiveness. Although the Board had declined to rule on the USPTO's Section 2(e)(5) functionality refusal, the district court also addressed the functionality issue.?TBL Licensing, LLC v. Vidal, Civil Case No. l:21CV681 (E.D. Va. December 8, 2022).

In its decision, the district court found that TBL's "utility patents disclosed and some claimed the features of TBL's applied-for design and TBL's own advertising touted the functional benefits' features." Utility patents go to the functionality of an invention. The boot design for which trademark protection was being sought was not one consisting only of non-functional aesthetic or ornamentation features. The district court was very clear that trademark law is not intended as a backdoor way to extend patent terms by stating:

Most of the issued patents cited in this brief 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.

As to its acquired distinctiveness analysis, the court elaborated on the TTAB's decision by noting the lack of "look for" advertising vis-a-vis the subject features, and it further observed:

TBL identifies itself as the source of its boots through use of a comprehensive range of traditional word marks, stylized word marks, logos, and slogans. These marks allow consumers to see that a boot is a TBL product before they get close enough to examine a pair of boots to tick off a check-list of eight specific product features. *** [T]he source-identifying significance of TBL's comprehensive use of traditional trademarks cannot be overstated.

Moreover, "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."

Although TBL's sales and advertising figures were large, "it 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 regardless of any other marks used on or with the product."

Finally, TBL's secondary meaning survey evidence was seriously flawed: first, the stimuli used in the survey were photographs of the TBL boot, not the drawings from the trademark application; second, the survey did not use "the tried-and-true accepted questions and progression deemed key to determining acquired distinctiveness;" and third, the control looked nothing like TBL's boot.

TBL has failed to carry its burden to prove that these eight features are nonfunctional and that consumers recognize these eight features as a unique indicator of the source of the boots.

Conclusion

Although I am a fan of Timberlands' products, in my opinion, the TTAB's decision was not one that should have been appealed. The underlying utility patents (now expired) were problematic plus the survey data and marketing approach did not support registration on the basis of acquired distinctiveness. The following take home points are presented for anybody who is contemplating seeking trademark registration on Section 2(f) grounds.

Take Home Points

1. When considering a trademark application for a product design, determine if the product design for which trademark protection is sought is separate and distinct from the design's functional aspects. If not, reconsider filing an application to avoid joining the list of rejected product design trademark applications.
2. Ensure that any survey to show acquired distinctiveness by disinterested consumers is properly designed and the results support your assertion of acquired distinctiveness.
3. Mere large expenditures on marketing and advertising to generate sales will likely not translate into a finding of acquired distinctiveness by the USPTO absent a nexis between the proposed design mark and the manner in which that design is presented in promotional materials.
4. Verify that the product design itself is the essential characteristic(s) that has become associated with the mark and its actual source in the consumers' minds.

THANK YOU FOR READING THIS BLOG! AS USUAL, IT IS NOT LEGAL ADVICE AND IS PRESENTED FOR INFORMATIONAL PURPOSES ONLY.