Timbs: Iconic Enough for Trademark Protection?

by Dennis Crouch

TBL Licensing, LLC v Hirshfeld, Docket No. 1:21-cv-00681 (E.D. Va. Jun 04,
2021)

I previously wrote about the TTAB decision denying TBL’s attempt to register the shape of its Timberland Boots as a protectable trade mark. Crouch, Iconic Timberland Boots–Trade Dress Worthy? Now, the company has filed a civil action in the Eastern District of Virginia seeking a court order that TBL is entitled to a registration. TBL provides its basic argument as follows:

The TTAB wrongly disregarded TBL’s potent evidence of secondary meaning, including extensive sales, advertising, and third-party recognition (with diverse examples of high-profile unsolicited media coverage and attention) that TBL amassed from over four decades of consistent and substantially exclusive use of the Timberland Boot Trade Dress. In so doing, the TTAB refused to register what has been deemed “one of the most recognizable shoes of all time.” The TTAB’s decision should thus be reversed and, because the Timberland Boot Trade Dress is not de jure functional, TBL’s application should be approved for publication. Alternatively, the case should be remanded for consideration of the issue of functionality.

TBL Complaint.

The TTAB gave little weight to the fact that the agency has issued registration certificates on many different shoe designs.  On the other hand, that same history-based argument will likely be more convincing to a district court judge.

There is no right to a jury trial in this type of case. To further save costs, the parties have agreed to waive a live trial completely and instead decide the case based upon the submitted record.

The parties have agreed to authorize the Court to adjudicate this matter on summary judgment and to resolve any disputes concerning material issues of fact on a submitted record.

This is apparently the same process used in other recent trademark civil actions. Booking.com B.V. v. Matal, 278 F. Supp. 3d 891, 900 (E.D. Va. 2017) (“The parties have ‘expressly agree[d] that if the Court determines after reviewing the briefs and evidence on summary judgment that any material issue of fact exists, the Court is authorized to resolve any such factual dispute.'”); Seacret Spa Intl. v. Lee, 1:15CV405(JCC/IDD), 2016 WL 880367, at *2 (E.D. Va. Mar. 8, 2016) (“The parties have agreed that . . . the Court may resolve those disputes on the basis of the record before it.”); Autodesk, Inc. v. Lee, 1:13-CV-1464 AJT/JFA, 2014 WL 5500799, at *1 (E.D. Va. Oct. 30, 2014) (parties “stipulated that the Court should resolve any material factual disputes without any further proceeding based on the summary judgment record.”).

I expect final briefing in February 2022 and a decision later in the spring.

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Iconic Timberland Boots — Trade Dress Worthy?

5 thoughts on “Timbs: Iconic Enough for Trademark Protection?

  1. 4

    Looks like a boot to me. Pretty much like any other boot.

    If they wanted to protect it, they should have gone the design route. Which, according to their own assertions of length of use in commerce, would have expired by now. Others should now be free to copy. They’ve got that tree logo as TM protection if they want people to know it was made by Timberland.

    Greedy, greedy, greedy.

  2. 2

    Where does Timberland come up with “four decades of consistent and substantially exclusive use of the Timberland Boot Trade Dress.” A quick search shows that this is untrue, and I suggest with their aggressive monitoring, they know it is untrue. See link to kohls.com; link to kohls.com; link to walmart.com?; https://www.skechers.com/women/shoes/sergeants—verdict-chick/44369_BOL.html; link to amazon.com

    1. 2.1

      I think that “substantially” is doing a lot of work in their “substantially exclusive” argument.

  3. 1

    OT, but today SCOTUS issued a CVSG for PersonalWeb v. Patreon re scope/application of the Kessler doctrine.

    link to scotusblog.com

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