Timberland Loses Fourth Circuit Bid to Protect Trade Dress for Iconic Boots

The U.S. Court docket of Appeals for the Fourth Circuit on Monday rejected Timberland’s bid to guard its in style boot design. The court docket defined that the district court docket didn’t err find that the corporate didn’t show the design had acquired distinctive which means.

Whereas Timberland’s model identify remains to be protected as a trademark, the well known boot design isn’t. Also called “Timbs,” the enduring boot’s cultural significance is simple. Most notably, Grammy-winning producer Timbaland’s stage identify is a nod to the clothes shop.

Throughout its rise within the Nineteen Eighties and Nineties, the boot was even dubbed “the Air Jordan of shoes.” Nevertheless, in line with Monday’s ruling, the boot’s design lacks “a particular which means” that identifies them as Timberlands. Whereas the model’s distinct tree brand stays protected beneath the Lanham Act, the boot’s design falls in need of being “distinguishable” sufficient to earn the identical safety.

In different phrases, regardless of their visibility in in style tradition, Timberlands don’t look or perform a lot otherwise than another climbing or development boot.

TBL vs. USPTO

TBL Licensing, LLC first submitted its trademark to the U.S. Patent and Trademark Workplace (USPTO) ian 2015. In its preliminary utility, the corporate outlined what it thought-about to be the boot’s 5 principal trademark options, together with its “tube-shaped ankle collar” and hexagonal eyelets. The appliance didn’t embody the boot’s distinctive outsole that options TBL’s already-registered tree brand and “TIMBERLAND” phrase mark.

TBL’s determination to exclude sure design options of the boot in its utility was “presumably strategic,” in line with the Fourth Circuit. “Had it included, as an example, the interior ankle collar or the lug sole, the general threat of a performance discovering seemingly would have elevated,” mentioned the court docket. Nevertheless, even excluding the extra sensible parts of the boot, TBL didn’t show that “the general public associates the options TBL did declare completely with Timberland,” mentioned a footnote within the opinion.

TBL additionally omitted its iconic wheat-yellow coloration from this explicit utility, because it had already tried and didn’t trademark the colour.

Discovering the design “purposeful and never distinctive” as an entire, the USPTO’s analyzing legal professional refused to register the design. TBL appealed. The Trademark Trial and Enchantment Board (TTAB) affirmed in 2021 and TBL challenged the choice in the USA District Court docket for the Jap District of Virginia. Now, the Fourth Circuit’s ruling has re-affirmed USPTO’s preliminary determination.

“Right here, we should affirm the district court docket except it reversibly erred find each that the design TBL claimed is purposeful and that the identical design isn’t distinctive,” wrote the Fourth Circuit.

Performance

The Lanham Act’s broad definition of a trademark as “any phrase, identify, image, or machine, or any mixture” used or supposed for use “to determine and distinguish” items excludes purposeful designs.

By way of the performance of Timberlands, the court docket wrote:

“The options of the applied-for boot design as an entire do what these options are purported to do in any good boot: they make it comfy, they make it sturdy, they make it waterproof, and so they make it appropriate for its supposed makes use of, together with climbing by way of a wide range of environments and pursuing some work initiatives for which toe safety is required.”

TBL argued that the district court docket “misconstrued the options TBL sought to register in its utility,” and due to this fact couldn’t make an knowledgeable determination on their performance. In response, the Fourth Circuit mentioned that even when it “failed to investigate the design as an entire or improperly strayed from the design TBL drew and described in its utility,” the restricted design offered nonetheless lacked distinctive which means.

Secondary Which means

With that, TBL tried to determine a “secondary which means” behind its design. Nevertheless, the district court docket discovered that the corporate fell in need of establishing the “formidable burden of proof” wanted for such a declare.

In its shopper surveys, TBL used grayscale pictures of the boot as an alternative of the drawn diagram it submitted in its utility. Thus, it used “options of the boot’s design that weren’t a part of the appliance to improperly counsel the boot was a Timberland,” the court docket mentioned. TBL declined to problem the court docket’s critiques of its shopper survey, as an alternative pushing for Timberland’s promoting to carry extra weight in figuring out secondary which means. As soon as once more, mentioned the court docket, the commercials used pictures of your complete boot—together with its iconic wheat-yellow hue— past what was submitted within the utility.

Regardless of the proof of business success TBL offered by way of gross sales figures, the Fourth Circuit agreed with the district court docket that TBL didn’t present enough proof to show that buyers purchased the boots particularly due to the options marked in its utility. And it equally discovered the district court docket didn’t err when it mentioned that widespread media protection of Timberlands didn’t spotlight the elements of the boot design described within the utility. Moreover, makes an attempt to plagiarize the boots didn’t show secondary which means. “Imitation of design options solely to revenue from the design’s performance doesn’t set up secondary which means,” wrote the Fourth Circuit. The truth is, the district court docket discovered that “[t]he saturation of the market with look-alike boots,” truly undermined TBL’s assertion of secondary which means, and the appellate court docket mentioned this evaluation was not clear error.