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Fourth Circuit Affirms Decision Denying Timberland Trade Dress Registration For Its Signature Boot
05/07/2024On April 15, 2024, the United States Court of Appeals for the Fourth Circuit affirmed a decision by the Eastern District of Virginia finding that (i) a trademark applicant’s applied-for design was functional and therefore unregistrable and (ii) applicant failed to establish the acquired distinctiveness required for trade dress registrability. TBL Licensing, LLC v. Vidal, No. 23-1150, 2024 WL 1609096 (4th Cir. Apr. 15, 2024).
TBL Licensing, LLC, better known as Timberland, filed Application Serial No. 86634819 on May 19, 2015, seeking trade dress registration of design elements of its signature tan work boot. Timberland’s application described:
A lace-up boot having … a visibly bulbous toe box and the following individual features: (1) the external appearance of a tube-shaped ankle collar … (2) outsoles having two color tones divided horizontally and extending around the circumference of the boot … (3) an hourglass-shaped rear heel panel … (4) quad-stitching forming an inverted “U” shape around the vamp line … and (5) eyelets shaped hexagonally on the exterior-facing outside surface.
The Examining Attorney refused registration, finding that (i) Timberland’s evidence of acquired distinctiveness was insufficient and (ii) the proposed mark was functional and unregistrable under 15 U.S.C. § 1052(e)(5). Timberland appealed the final refusal to the Trademark Trial and Appeal Board (the “TTAB”), which affirmed the examining attorney’s refusal to register the design, finding it lacked distinctiveness and declining to rule on functionality.
Following the TTAB’s decision, Timberland brought a civil action in the Eastern District of Virginia under 15 U.S.C. § 1052(f), asserting again that the mark had acquired distinctiveness and was not functional, and was therefore registrable. At this stage, both parties agreed to allow the district court to resolve factual disputes without the need for a trial. Thus, each party moved for summary judgment and the district court conducted a bench trial.
The district court determined that every design element asserted by Timberland was functional, as supported by the existence of patents covering each of the elements and advertisements promoting such uses. For example, quad stitching is described in U.S. Patent No. 799,685, which explains that multiple rows of stitching improve durability and prevent leakage. Timberland advertises not only the waterproof quality of its boots, “but in particular that its four rows of stitching resist the effects of rot, mildew, and stress over wear time.” The district court additionally noted that most of the relevant patents have expired, and the disclosed features are now public domain: “To conclude that [Timberland] can strip the public’s right to copy and benefit these features today would be antithetical to the pro-competitive objectives of both trademark and patent law.” On the issue of acquired distinctiveness, the district court reiterated the TTAB’s conclusion that the proliferation of similar boots and absence of reference to the design features in Timberland’s advertising refute its assertion of acquired distinctiveness.
On appeal to the Fourth Circuit, the Court found that the district court did not err in concluding that neither Timberland’s advertising campaigns nor the unsolicited media coverage demonstrated secondary meaning, citing the absence of focus in both on the applied-for design elements. The Court also found that the district court did not err in concluding that Timberland failed to demonstrate exclusive use and that the existence of similar boots implies non-distinctiveness.
When evaluating distinctiveness, the issue is not merely whether similar products exist, but whether the products were “intended to deceive consumers about the products’ source.” Timberland did not provide such evidence, so the existence of many similar boots “suffices to prevent [Timberland] from proving it exclusively used that design.”
Regarding functionality, the Court found that the district court failed to consider the applied-for design “as a whole,” as required by 15 U.S.C. § 1052(e) and that the district court erred by not considering two of the four functionality factors (availability of functionally equivalent alternative designs and facts indicating that a design results in a comparatively simple or cheap method of manufacturing the product). However, finding that there was no error in determining that the design had not acquired distinctive meaning was a sufficient basis on its own to affirm the lower court’s decision.
