In re Slokevage

In re Slokevage

441 F.3d 957

Facts: Plaintiff filed an application to register a mark on the Principal Register for “pants, overalls, shorts, culottes, dresses, skirts.” Plaintiff described the mark in her application as a “configuration” that consists of a label with the words “FLASH DARE!” in a V-shaped background, and cut-out areas located on each side of the label. The cut-out areas consist of a hole in a garment and a flap attached to the garment with a closure device. The examiner refused to register the mark on the ground that the clothing configuration constitutes “product design/configuration,” and pursuant to the decision of the U.S. Supreme Court in Wal-mart “product design” cannot be inherently distinctive..
Procedural Posture: Plaintiff appeals from the decision of the United States Patent and Trademark Office, Trademark Trial and Appeal Board sustaining the refusal of the examiner to register her trade dress mark for clothing. Because the Board's finding that plainitff’s trade dress was product design and thus could not be inherently distinctive, and that the trade dress was not unitary are supported by substantial evidence, the Court affirm.

Issue: Whether plaintiff’s trade dress constitutes product packaging and is therefore capable of being inherently distinctive

Holding: No. Plaintiff's trade dress constitutes product design and therefore cannot be inherently distinctive.

Rationale: Although the decision in Wal-Mart does not expressly address the issue of what constitutes product design, it is informative to this case because it provides examples of trade dress that are product design. The Court observed that a “cocktail shaker shaped like a penguin” is product design and that the trade dress at issue in that case, “a line of spring/summer one piece seersucker outfits decorated with appliques of hearts, flowers, fruits, and the like” is product design. Thus, product design can consist of design features incorporated into a product. Here, plaintiff urges that her trade dress is not product design because it does not alter the entire product but is more akin to a label being placed on a garment. The court did not find this argument persuasive. The holes and flaps portion are part of the design of the clothing-the cut-out area is not merely a design placed on top of a garment, but is a design incorporated into the garment itself.

Finally, the Court in Wal-Mart provided guidance on how to address trade dress cases that may be difficult to classify. “To the extent that there are close cases, we believe that courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning.

Analysis: While the Wal-Mart court laid down a formulaic approach to determining inherent distinctiveness in trade dress, the case at bar illustrates the problem with its application. Product design can never be inherently distinctive but product packaging can is a bright line rule to follow. However, the court did not provide the same kind of guidance in determining which category to place a product in. Therefore, it seems that all the Wal-Mart holding really did was make litigation centered upon which category a product belongs in, as this case is illustrative of.

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