Iconic Timberland Boots — Trade Dress Worthy?

by Dennis Crouch

Timberland has been selling its iconic boots back in 1973 – almost 50 years ago.  Actually, at the time the company name was Abington Shoes, but quickly changed its name to Timberland Boot because of the popularity.  Timberland did not patent or register a copyright the design, and the market it rife with copycat boots.

Over the past several years, Timberland has been attempting to register the shape of the boots as protectable trade dress. However, the USPTO’s Trademark Trial & Appeal Board (TTAB) rejected the application, finding that the the company had failed to demonstrate that the boot shape had acquired secondary meaning in the eyes of consumers.  The examiner had also rejected the trade dress registration as  improperly functional, but the TTAB did not reach that issue.

In a new lawsuit, Timberland has asked a district court judge to overturn these rulings and find that the trade dress is distinctive and registrable.

Complaint: TBL Registering TM on Timberlands

In its brief, Timberland provides examples of other shoe shape trade dress that have been registered, including the classic low-top Converse sneakers.

 

 

16 thoughts on “Iconic Timberland Boots — Trade Dress Worthy?

  1. 2

    This cries out for a survey. That’s the best way to test consumer perception. And with the internet, it is not much easier and cheaper to do it.

    1. 2.1

      I meant, it IS much easier and cheaper to do it.

  2. 1

    There is case law that PTO issuance of other patents that it should not have is not a valid argument for issuance of another. I would assume that also applies to TM registrations.

    1. 1.1

      Do you happen to have a cite, Paul?

      1. 1.1.1

        Sorry, but I think it is cited somewhere in the MPEP. [As well as logical – it’s sort of like the new tax fraud case in NY – i.e., the argument that “other companies did it” is no defense. ]

        1. 1.1.1.1

          Not sure that the logical assertion follows (given the fact that Congress has expressly set out the existence and level of presumption of validity).

          1. 1.1.1.1.1

            Prior patents issued by mistake still have their validity presumption unless and until it is eliminated. But that does not make their examiner’s allowance decisions legally binding on another examiner in the examination of other applications.

            1. 1.1.1.1.1.1

              Prior patents issued by mistake still have their validity presumption unless and until it is eliminated

              So the assertion of “issued by mistake” cannot inure until that point.

              Your premise is leaking.

        2. 1.1.1.2

          I think that you are thinking of In re Willis, 455 F.2d 1060, 1062 (C.C.P.A. 1972) (“Appellant also contends that the Patent Office has… acted contrary to normal patent practice in holding that it is obvious per se to add a blowing agent to any polymeric composition. In support of the latter contention, appellant cited… art to show a pattern of normal Patent Office practice in granting patents to foamed polymers in the face of prior art patents showing the unexpanded polymers. While… an applicant has a right to have considered art which he makes of record, we do not think much weight can be given to the references cited by appellant here. What the Patent Office has allowed in previous cases is not binding in subsequent cases, especially when different factual situations are involved”).

        3. 1.1.1.3

          The TTAB has also said that many times. Just b/c someone else got a TM regsitration does not mean this one should be issued.

    2. 1.2

      Paul, as Greg pointed out, your argument is supported by the Willis decision.

      But as a practical matter, I am not convinced these other registrations move the ball in helping TBL’s argument. Many of them were limited to specific visual elements like shoe sole design, stitching patterns, strap shape, etc., whereas TBL appears to be trying to more broadly protect its entire overall design. It’s obviously a lot harder to show secondary meaning for an overall shoe design than an idiosyncratic sole or stitching pattern. And TBL bragging in its Complaint that its overall design was copied for decades by so many third parties, if anything, plays into the inevitable counter-argument that the public now regards that design as generic.

      1. 1.2.1

        Off the top of my head, I think it was Dr. Martens that tried to protect their sole design.

    3. 1.3

      “The fact that, whether because of administrative error or otherwise, some marks have been registered even though they may be in violation of the governing statutory standard does not mean that the agency must forgo applying that standard in all other cases.” In re Boulevard Entertainment, 334 F.3d 1336 (Fed. Cir. 2003) (refusal to register “1-800-JACK-OFF” and “JACK-OFF” as marks on the Principal Register).

      1. 1.3.1

        Thanks pal – however, the premise here does not include those ‘other items’ being improvidently granted – but instead, those items BEING granted (properly) somehow cannot serve as evidence of the properness of the action in a current case.

        If anything, the different fact pattern you share makes it more likely that a fact pattern in which other grants WERE provident, should be able to serve as evidence as desired.

        1. 1.3.1.1

          I suppose, but the type of argument you’re envisioning anon often ends up being more trouble than it’s worth. Most adjudicative bodies, whether they be courts, agencies, councils, etc., are strictly bound to decide issues based on the law and the facts and circumstances of each particular case. What someone else did in some prior non-precedential case involving allegedly similar facts has, at best, secondary relevance. At worse, the argument provokes hostility by the adjudicator if it’s interpreted as asking them to forego own independent analysis of the facts and instead defer to what someone else did in the past.

          Obviously prior decisions that aren’t precedent can have some persuasive impact, but usually only if there’s an actual opinion you can point to with reasoning or analysis that applies to your case. But if all you’re pointing to is some binary decision by some examiner in the past, who allowed an allegedly similar patent or TM registration, you’re probably not going to get very far with this line of argument.

          1. 1.3.1.1.1

            I hear you, and am not really advancing anything new or groundbreaking — merely that past cases — supported by the application of law are in fact evidence of…

            … the application of law.

            The blanket statement of “the past does not matter” simply cannot be correct.

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