Getting The Boot

The rejection of Timberland's efforts to secure a patent for its "perhaps iconic' boot has been affirmed by the United States Court of Appeals for the Fourth Circuit

TBL Licensing, LLC, more commonly known as Timberland, tried to register certain features from the design of its popular boot under the Lanham Act as trade dress. But the law prohibits the registration of product designs that have not acquired a distinctive meaning identifying the product with its maker in the minds of the consuming public. See TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 28–29 (2001). It also bars the registration of product designs that are functional since protection of functionality is reserved for patent law. Id. at 29. Concluding the boot design is not distinctive, the United States Patent and Trademark Office (“USPTO”) refused to register it. TBL turned to federal district court, which agreed with the USPTO that the boot design is not distinctive and added that it is impermissibly functional. On either independent ground, the district court granted the USPTO’s motion for summary judgment. On distinctiveness, the issue we face is not whether the public recognizes the entire product as Timberland’s perhaps iconic boot; rather, we must decide whether the district court reversibly erred in concluding that the subset of design features that TBL selectively sought to register lacks distinctiveness in the public’s view. We hold that the district court did not reversibly err. So, without deciding functionality, we affirm the district court’s grant of summary judgment for the USPTO.

Das Boot

Some consumers might recognize the whole boot, unclaimed features and all, as a Timberland. But TBL did not undertake to register the entire boot. Instead, TBL sought to register only the select attributes described in its application—for instance, two-colored outsoles “visibly showing inverted tooth shaped cuts” along the soles’ sides, but not “the bottom, outer most surface of the outsole.” J.A. 253–54. Just as TBL effectively narrowed the functionality inquiry by tailoring its application to select elements of its boot design, so too must we limit our secondary meaning analysis to those applied-for features. Thus, the question is whether the design features claimed in TBL’s application have acquired secondary meaning. And those features have not if consumers associate them with sources other than just Timberland.

Conclusion

the district court did not clearly err in finding that TBL failed to carry its burden of proving that the boot design it sought to register has acquired a distinctive meaning. For that reason alone, TBL could not register the design described in its application, regardless of whether or not that design, as a whole, is functional. Accordingly, without deciding the functionality issue, the district court’s judgment is AFFIRMED

(Mike Frisch)