IP Law Daily, TRADEMARK—4th Cir.: USPTO’s refusal to register Timberland’s boot trade dress affirmed on appeal, (Apr 16, 2024)

By George Basharis, J.D.

The district court had focused on whether the public associates the specific design features of Timberland boots with Timberland, and found they did not meet the criteria for distinctiveness or non-functionality.

The U.S. Court of Appeals for the Fourth Circuit has affirmed the decision of the federal district court in Alexandria, Virginia, which sided with the U.S. Patent and Trademark Office (USPTO) in a trade dress dispute involving TBL Licensing, LLC, commonly known as Timberland. Timberland sought to register certain design features of its boot as trade dress under the Lanham Act. The USPTO refused registration, concluding that the design was not distinctive and was functional. The district court agreed with this assessment, granting summary judgment in favor of the USPTO. The Fourth Circuit affirmed the district court’s decision, focusing on the lack of distinctiveness in the design without making a decision on functionality (TBL Licensing, LLC v. Vidal, April 15, 2024, Quattlebaum, A.).

In 2015, Timberland applied to register certain features of its popular boot as trade dress under the Lanham Act. Timberland included a written description specifying the elements of its boot design that were claimed as part of its proposed mark. These elements included a padded collar, two-tone sole, lug sole, hourglass heel counter, quad stitching, shape of vamp stitching, hexagonal eyelets, and bulbous toe box. The application did not claim any particular color as part of the boot’s design, such as the popular wheat-yellow color, nor did it include Timberland’s already-registered tree logo or TIMBERLAND word mark.

The USPTO’s examining attorney refused to register the design, finding it to be overall functional and not distinctive. Timberland appealed to the Trademark Trial and Appeal Board, which affirmed the examining attorney’s refusal to register the design. The Board found that the design lacked distinctiveness and declined to determine whether it was functional.

Timberland challenged the decision in federal district court. The district court held that Timberland could not register the design described in its application for two independent reasons. First, the district court found the design to be functional. Second, it found that the design, as described, had not acquired a distinctive meaning that identified the boots as Timberlands. On either ground, the district court granted the USPTO’s motion for summary judgment.

The appeals court held that the district court did not err in its conclusion. The court focused on the design features specified in Timberland’s application, determining that these features, as a whole, had not acquired secondary meaning in the mind of the public. The presence of similar boot designs in the market further suggested that the claimed design was not distinctive.

Functionality. Starting with functionality, the lower court divided 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. The district court focused on utility patents and advertisements that it found described the functional benefits of each element in Timberland’s application. After combining the elements, the court determined that the features of the applied-for boot design, as a whole, performed the functions expected of any good boot. Timberland argued that the district court erred by not considering Timberland’s boot design as a whole or the other functionality factors used in the Fourth Circuit, such as the availability to competitors of functionally equivalent designs or facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

Acquired distinctiveness. Without making a decision on functionality, the Fourth Circuit affirmed the lower court’s decision based on the lack of distinctiveness in the design features claimed by Timberland. The court explained that the law prohibits the registration of product designs that have not acquired a distinctive meaning identifying the product with its maker in the minds of the consuming public. Importantly, public perception must rely on the features claimed and described in Timberland’s application.

While some consumers may identify the entire boot, including unclaimed features, as a Timberland product, Timberland did not seek to register the entire boot. Instead, Timberland aimed to register only specific attributes described in its application. By focusing its application on select elements of its boot design, Timberland narrowed the functionality inquiry. Therefore, the court’s assessment of secondary meaning was limited to these applied-for features. The crucial question was whether the design features claimed in Timberland’s application had gained secondary meaning, meaning consumers associated them exclusively with Timberland.

The district court assessed various factors, including consumer studies, advertising expenditures, sales success, media coverage, attempts to plagiarize, and continuous use, to determine whether Timberland’s applied-for features had acquired secondary meaning. Consumer surveys are crucial in secondary meaning analysis as they are considered the most direct way to establish secondary meaning. Timberland hired a survey expert to demonstrate consumer association with the claimed features of its boot design. However, the district court identified flaws in the survey methodology. Specifically, the court noted issues with the survey’s use of grayscale photographs suggesting the boot was a Timberland product and its problematic questioning progression, ultimately leading to doubts about the survey’s validity in establishing secondary meaning. Timberland did not challenge the court’s critique.

Timberland challenged the district court’s ruling on advertising expenditures, arguing that the court overlooked the significance of such spending. Timberland asserted it had invested over $81 million in advertising its boot over six years but faced criticism from the court for failing to direct consumers to the specific design features sought for registration. The court underscored that while advertising expenses are important, they must translate into consumer association with the claimed design features. Advertisements spotlighting these features would provide more persuasive evidence of secondary meaning. The Fourth Circuit concluded that the lower court did not err in its analysis of advertising expenditures as an indicator of secondary meaning.

The appeals court found no clear error in the district court’s determination that the commercial success of Timberland boots did little to indicate that the claimed features of the boot’s design had acquired distinctiveness. Timberland contended that the district court’s assessment of the boot’s sales success was flawed, despite the boot’s substantial commercial achievements. However, the court emphasized that without evidence demonstrating that customers purchased the boots because they associated the claimed design features with Timberland, the sales figures alone did not establish secondary meaning.

Similarly, despite the Timberland boot’s extensive exposure in various media outlets, including television, movies, and social media posts, the court determined that this coverage did not convincingly demonstrate the acquisition of secondary meaning for the specific design features Timberland sought to register. The court emphasized that many media images included features not included in Timberland’s trade dress application, suggesting reliance on other branding rather than solely on the claimed design for identification. Again, the district court did not clearly err.

The district court did not infer distinctiveness from plagiarism attempts, as there was no evidence of intent to deceive consumers into thinking competitors’ boots were Timberlands. Timberland argued that attempts by others to copy its boot design suggested secondary meaning, but such attempts are only indicative of secondary meaning if they are intended to deceive consumers about the product’s source. Since Timberland failed to demonstrate intentional plagiarism by competitors, the district court did not err in declining to infer distinctiveness from the mere existence of similar-looking boots. Instead, the court found that the saturation of similar-looking boots in the market undermined Timberland’s argument that its claimed design features were distinctive.

Timberland had to show that the design features described in its application encouraged consumers to buy the boot not because those features make the boot a solid product, but because, to the public, those features make the boot a Timberland product. However, Timberland failed to produce direct evidence of secondary meaning, and the Fourth Circuit affirmed the district court’s conclusion that circumstantial evidence of secondary meaning fell short.

The Case is No. 23-1150.

Attorneys: Elizabeth D. Ferrill (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP) for TBL Licensing, LLC. Christina J. Hieber, U.S. Patent and Trademark Office, for Katherine K. Vidal.

Companies: TBL Licensing, LLC

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