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In re Slokevage - 441 F.3d 957 (Fed. Cir. 2006)

Rule:

The U.S. Supreme Court has observed that trade dress is a category that originally included only the packaging of a product, but has been expanded by courts to encompass the design of a product. In order for an applicant to gain protection for trade dress, the trade dress must be distinctive, either inherently or by acquiring distinctiveness. Trade dress is inherently distinctive when its intrinsic nature serves to identify a particular source of a product, and, in contrast, acquires distinctiveness when the public comes to associate the product with its source. The Supreme Court has determined that certain types of trade dress, in particular, product design and color, can never be inherently distinctive.

Facts:

Joanne Slokevage (Slokevage) filed an application to register a mark on the Principal Register for "pants, overalls, shorts, culottes, dresses, skirts." Slokevage described the mark in her application as a "configuration" that consists of a label with the words "FLASH DARE!" in a V-shaped background, and cut-out areas located on each side of the label. The trademark examiner initially refused registration of the proposed mark on the ground that it constituted a clothing configuration that is not inherently distinctive. The examiner afforded Slokevage the opportunity to submit evidence of acquired distinctiveness or to disclaim the design elements of the configuration, but Slokevage chose not to submit evidence of acquired distinctiveness or to disclaim the design elements. Rather, she argued that the trade dress was inherently distinctive. The examiner, relying on section 2(f) of the Trademark Act made final his refusal to register the mark on the ground that the clothing configuration constituted “product design/configuration,” and pursuant to the decision of the U.S. Supreme Court in Walmart Stores, Inc. v Samara Brothers, Inc., “product design" cannot be inherently distinctive. Moreover, the examiner found that the configuration was not “unitary” for purposes of avoiding a disclaimer requirement. Slokevage appealed the refusal of the examiner to register the trade dress configuration, and the Trademark Trial and Appeal Board (Board) affirmed the examiner's decision. Slokevage timely appealed, arguing that the Board erred in determining that the trade dress for which she sought protection was product design, and thus, that it could not be inherently distinctive.

Issue:

Did the Trademark Trial and Appeal Board (Board) err in determining that the trade dress for which Slokevage sought protection for was product design, and thus, could not be inherently distinctive?

Answer:

No.

Conclusion:

The court agreed with the Board and affirmed the decision. Where the trade dress at issue was found to be product design, then it could not be inherently distinctive under the Supreme Court's decision in Wal-Mart Stores, Inc. v. Samara Brothers, Inc. Proof of acquired distinctiveness was required for the applicant's trade dress mark to be registered. The applicant argued that her trade dress mark was unitary because its elements are inseparable and therefore that the examiner should not have required a disclaimer. The court agreed with the PTO that substantial evidence supported the Board's finding that the mark was not unitary. The display of elements in the drawing of the trade dress, the applicant's earlier registration of the words "FLASH DARE!," and the applicant's design patent on the cut-out area were evidence that the trade dress was not unitary. The elements were not inseparable.

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