This week’s post is for all you lovely ladies out there who regularly read my trademark blog but are always left disappointed when it’s not about handsome and well-built studs who enjoy dancing on stage and flirting with adoring women for a living. Yes, it’s your lucky day because this blog entry is dedicated to the world-famous Chippendales, the live all-male show that has been knocking the socks off women in over 25 different countries for the past three decades. As depicted in the photograph above, the Chippendales all strut around with a bare torso wearing shirt cuffs and a tuxedo collar with a bow tie. And for you men reading this who dream of being a Chippendale, you can even purchase the collar and cuffs on the Chippendales website for the low price of $24.95. Unfortunately, there is nothing for sale on the website that will help you lose 75 pounds or remove the hair from your back.
On November 27, 2000, Chippendales filed a trademark application seeking to register the following mark for “adult entertainment services, namely, exotic dancing for women”:
Basically, Chippendales was attempting to register the cuffs and collar as worn by the male performers during their exotic dancing routines. The Trademark Office initially refused registration of Chippendales’ mark on the basis that the cuffs and collar were merely ornamental or decorative features of the services provided by Chippendales and not inherently distinctive of them. In other words, lustful female consumers would not recognize the cuffs and collar as being exclusively associated with Chippendales, but rather would view them as simply a costume. In response, Chippendales argued that the cuffs and collar were inherently distinctive features of its adult entertainment services or, in the alternative, that the cuffs and collar had acquired distinctiveness in the minds of the public over the 20 years the mark had been in use.
To make a long story short, the Trademark Office finally allowed Chippendales’ mark to proceed to registration on the Principal Register under what is called “Section 2(f).” Section 2(f) is the portion of the Trademark Act that allows for the registration of trademarks that were just ornamental or decorative when they were first adopted by their owners (and therefore not really trademarks), but have now become strong and distinctive through their substantial and continuous use in commerce in connection with particular products/services. It is important to note that trademark registrations granted under Section 2(f) receive the same benefits and protections as those afforded to any other registration on the Principal Register.
This is where the story gets absolutely wacky. A little over two years after Chippendales was granted a registration under Section 2(f) for the cuffs and collar mark, it applied to register the identical mark for the identical services, only this time Chippendales refused to concede that its mark was not inherently distinctive and only eligible for registration under Section 2(f) on the basis of acquired distinctiveness. After three years and the submission of hundreds upon hundreds of pages of arguments, evidence, expert reports, and written briefs, the Trademark Trial and Appeal Board ruled that Chippendales’ cuffs and collar mark was not inherently distinctive and could only be registered under Section 2(f). The Board specifically noted that even if it had found otherwise, the trademark registration already owned by Chippendales had become incontestable and was entitled to “the full benefits accorded all registrations” under the Trademark Act. You can read the Board’s 41 page opinion here if you so desire.
But, that didn’t stop Chippendales. Oh no. It filed a Notice of Appeal to the United States Court of Appeals for the Federal Circuit on May 29, 2009 requesting that it review the decision of the Trademark Trial and Appeal Board. On October 1, the court affirmed the decision of the Board that the cuffs and collar mark lacked inherent distinctiveness. You can read the 21 page ruling here. The only option left for Chippendales is to appeal the decision to the United States Supreme Court, which is probably unlikely considering the chances of the Supreme Court agreeing to take the case. I really hope it has more important things to worry about than the outfits of male exotic dancers, especially when Chippendales already has all the federal protection for its cuffs and collar trademark that it could possibly obtain.
So, in sum, Chippendales decided to force the Trademark Office, Trademark Trial and Appeal Board, and the United States Court of Appeals for the Federal Circuit to spend four and a half years and countless thousands of dollars so that it could attempt to obtain nothing more than what it already owned. Pretty strange if you ask me. I mean, does Chippendales really enjoy spending hundreds of thousands of dollars in legal fees and costs attempting to register a trademark for which it already owned a registration that was incontestable and that was entitled to all the benefits and presumptions of any other trademark registration? In my opinion, this exercise in futility was a complete waste of precious judicial and Trademark Office resources.
So, I suggest that instead of you lovely ladies paying to go see the Chippendales time and time again and encouraging this type of nonsense, use that money to get your man into Weight Watchers, hire him a personal trainer, and buy a pack of disposable razors. You’ll have your own personal Chippendale in no time.