The US Court of Appeals for the Fourth Circuit has affirmed a district court’s summary judgment grant in a trademark dispute, finding that it did not err in concluding that a subset of design elements lacked distinctiveness in the public’s view (TBL Licensing, LLC v Katherine Vidal, Director of the USPTO, Case 23/1150, 15 April 2024, Quattlebaum, Gregory, Benjamin, JJ).
Case background
TBL Licensing is commonly known as Timberland and is a prominent footwear manufacturer. Timberland tried to register specific design elements of its popular boot as protected trade dress at the USPTO. In its application, Timberland provided a detailed written description of the boot design elements that it sought to register. It also included a drawing of these design features.
The USPTO rejected Timberland’s application, finding that the design was functional and lacked distinctiveness. Timberland appealed to the TTAB, which affirmed the rejection. Timberland then challenged the board’s decision in the US District Court for the Eastern District of Virginia. The district court granted summary judgment in favour of the USPTO because Timberland’s design was functional and had not acquired distinctiveness. Timberland appealed.
Timberland argued that the district court had improperly segmented the design during its functionality analysis. Further, Timberland argued that the district court failed to meaningfully consider the design as a whole, and that even if it had, the court erred in considering specific factors, including the availability of alternative designs and the design’s simplicity. The court also relied on inapposite patents and advertisements as evidence to support its functionality finding, an analysis that Timberland argued was improper.
Court decisions
The Fourth Circuit affirmed the district court’s decision. While it acknowledged the potential error in the district court’s failure to analyse the design holistically, the court found that the limited design elements that Timberland sought to register lacked secondary meaning – a crucial element for trade dress protection. The court employed a secondary-meaning analysis to assess public perception of Timberland’s design. It considered various factors, including advertising expenditures, consumer studies, sales success, unsolicited media coverage, attempts at imitation and length of exclusive use.
Applying each factor, the Fourth Circuit determined that the district court did not clearly err in finding that the design elements lacked distinctiveness. The court explained that the district court had highlighted flaws in Timberland’s consumer survey, noting suggestive questions and a lack of focus on the claimed design features.
The district court also emphasised that Timberland’s advertising expenditures failed to effectively link the claimed design features with Timberland in consumers’ minds. Timberland’s arguments concerning sales success, media coverage and attempts at plagiarism were also deemed insufficient to establish secondary meaning. Last, the presence of similar-looking boots from other manufacturers undermined Timberland’s claim of exclusivity in using the design.
Lacking direct consumer survey evidence, the Fourth Circuit determined that Timberland’s circumstantial evidence failed to establish consumer recognition of the specific design elements that Timberland sought to register. The court also agreed that the prevalence of similar products in the marketplace undermined the design’s uniqueness as an indicator of brand association with Timberland.
Key takeaways
When seeking trade dress protection for product designs, demonstrating both non-functionality and distinctiveness is imperative. This case serves as a reminder to thoroughly analyse and present direct evidence to establish the uniqueness of a design and its nonfunctional aspects when pursuing trade dress registration.
