## Facts

- Chippendales USA, Inc. provides adult entertainment services featuring male dancers.
- Beginning in 1979, performers wore an “abbreviated tuxedo” consisting of wrist cuffs and a bowtie collar without a shirt (the “Cuffs & Collar” costume), used for decades in performances and advertising.
- In 2000, Chippendales applied to register the Cuffs & Collar costume as a service mark for “adult entertainment services, namely exotic dancing for women.”
- In 2003, the USPTO registered the costume on the Principal Register based on acquired distinctiveness under Lanham Act § 2(f), not inherent distinctiveness.
- In 2005, Chippendales filed a new application for the same costume, seeking registration as inherently distinctive without relying on § 2(f).
- The examining attorney refused registration on the ground that the costume was not inherently distinctive, and the Trademark Trial and Appeal Board (TTAB) affirmed, relying on evidence that costumed uniforms are common in adult entertainment and that the design resembled features associated with the Playboy bunny outfit.
- Chippendales appealed to the United States Court of Appeals for the Federal Circuit.

## Issues

1. Whether the Cuffs & Collar costume, used as trade dress for adult entertainment services, is inherently distinctive and registrable on the Principal Register without a § 2(f) showing.
2. Whether the TTAB applied the correct legal standard (including the Seabrook factors) and permissibly relied on marketplace evidence and comparisons to similar costumes in concluding the costume was not inherently distinctive.

## Decision

- The Federal Circuit affirmed the TTAB’s refusal to register the Cuffs & Collar costume as inherently distinctive.
- The court held that the existing § 2(f) registration reflected acquired distinctiveness only and did not establish inherent distinctiveness.
- The court approved the TTAB’s use of the Seabrook framework and held that substantial evidence supported the finding that the costume was a refinement of commonly used costuming in the relevant field rather than a design that is unique or unusual enough to be inherently distinctive.
- The court rejected the argument that the TTAB applied an improper “novelty” requirement, concluding it properly assessed distinctiveness in context.

## Legal Principles

- Trade dress (including attire used in rendering services) is registrable on the Principal Register only if it is inherently distinctive or has acquired distinctiveness under Lanham Act § 2(f).
- A prior registration granted under § 2(f) does not constitute a determination that the mark is inherently distinctive and does not foreclose later refusal of inherent distinctiveness for the same matter.
- Inherent distinctiveness of trade dress may be evaluated using the Seabrook factors, including whether the design is a common or basic form, whether it is unique or unusual in the field, and whether it is merely a refinement of commonly adopted ornamentation.
- Evidence of common industry practices and similarities to preexisting, well-known designs may support a finding that trade dress is not inherently distinctive.

## Conclusion

The Federal Circuit upheld the refusal to register Chippendales’ Cuffs & Collar costume as inherently distinctive trade dress, holding that substantial evidence showed the costume fit within common adult-entertainment costuming and that a § 2(f) registration for acquired distinctiveness did not establish inherent distinctiveness.


In re Chippendales USA, Inc., 622 F.3d 1346 (Fed. Cir. 2010)