The U.S. Court of Appeals for the Federal Circuit recently affirmed a U.S. Patent and Trademark Office (USPTO) decision that that a product feature in jeans that was the subject matter of a U.S. trademark application constitutes a product design/configuration that cannot be registered absent a showing of acquired distinctiveness. In re Joanne Slokevage, 441 F.3d 957; 2006 U.S. App. LEXIS 6893 (CAFC 2006).
At issue was an application featuring the "configuration" of a label with the words "FLASH DARE!" in a V-shaped background and cut-out areas with flaps on each side of the label, all of which were to be located on the rear of jeans, allowing a portion of the wearer’s underwear to be displayed through the openings when the flaps were peeled open.
The USPTO found that the claimed design feature of the application constituted a product design or configuration that must be disclaimed from the mark or supported by evidence of acquired distinctiveness. On appeal, the applicant argued that its claimed design was an inherently distinctive feature that involves only one component of a product design and thus falls outside the scope of the Supreme Court’s decision in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., a case which involved design elements distributed throughout the entire garment. In Wal-Mart, the Supreme Court held that "product design" cannot be inherently distinctive and therefore must be supported by evidence of acquired distinctiveness. The Court rejected the applicant’s interpretation of Wal-Mart, stating that the term "product design" is broad enough to encompass design features incorporated into a product as well as the product itself.
The applicant also asserted that the combination of the word and design elements comprising its mark were "inseparable" and thus "unitary" for the purposes of avoiding the USPTO requirement to disclaim only the design elements. In rejecting this argument, the Court pointed to the display of the elements in the drawing of the trade dress, the applicant’s earlier registration of the words "FLASH DARE!" and the applicant’s design patent limited to the cut-out area. As the Court commented, "[W]hile in some cases the elements may be so combined as to be inseparable, that is not the case here, as shown by the separate of the words and design elements and the separate registration of the elements."
Practice Note
A review of the application record indicates that the applicant had claimed that mark had been in use in U.S. commerce since at least as early as August 1997. As a practical matter, the applicant could very likely have secured a registration on the Principal Register under §2(f) of the Trademark Act, based on acquired distinctiveness through its substantially continuous and exclusive use of the mark in U.S. commerce for a period of five years. Sometimes less can be more, even when it comes to peek-a-boo jeans!
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