Timberland's boot fail: Trade dress protection in jeopardy?

The shoe brand’s Fourth Circuit legal battle showed that utility patents are potentially radioactive to trade dress claims, says Marc Misthal of Offit Kurman.

Timberland’s efforts to register the exterior configuration of its iconic boot were just given the boot by the Fourth Circuit in a decision that seems to deviate from precedent regarding the availability of trade dress protection and which seems to have some troubling implications. Understanding the prior proceedings is helpful to understanding the Fourth Circuit’s problematic ruling.

Trademark office examination and appeal

In May 2015, Timberland applied to register aspects of its boot design as a trademark. However, the examiner rejected the application, that the claimed configuration was functional and had not acquired distinctiveness. Timberland appealed to the Trademark Trial and Appeal Board (TTAB), which affirmed the Examiner’s decision.

District court proceedings

Timberland challenged the TTAB’s decision by filing suit against the Trademark Office in the Eastern District of Virginia, as permitted by the Lanham Act. This allowed Timberland to introduce additional evidence to bolster its case.

Both Timberland and the Trademark Office sought summary judgment. Despite the supplemented record, the district court denied registration of the configuration for two reasons.

First, it deemed each element of Timberland’s proposed configuration as functional. The court identified approximately 13 utility patents disclosing various elements of the claimed configuration, ranging from the collar to the two-tone sole, the lug sole, the hexagonal eyelet, and the bulbous toe box. Both Timberland and third parties owned these patents; some were still in force, and others had expired. Additionally, the court referenced Timberland advertisements “extolling the functional benefits of each element of the applied-for-design.” The key to the court’s functionality ruling appears to be the following:

Most of the issued patents cited in this brief have expired, meaning that the disclosed features are in the public domain. To conclude that [Timberland] can strip the public’s right to copy and benefit from these features today would be antithetical to the pro-competitive objectives of both trademark and patent law.

The court’s analysis, however, is problematic. In the context of trade dress, the question is not whether each element, on its own, is functional.

The question is whether the claimed configuration, as a whole, is functional. Just because each element is functional does not mean the configuration as a whole is functional. See eg, LeSportsac v Kmart, 754 F.2d 71, 76 (2d Cir. 1985).

The district court then turned to the question of acquired distinctiveness, or whether consumers viewed the configuration as an indicator of source. In ruling that they did not, the court pointed out that Timberland had not produced evidence that, in over 50 years of advertising, it had used “look for” advertising to promote the claimed configuration.

Additionally, the court noted that Timberland used its registered trademarks on its boots to identify their source. Further, evidence showed that Timberland had pointed to the colour of its boots as a source identifier, but the Trademark Office refused to register the colour because third parties used it; moreover, in prosecuting that application, Timberland executives said there were no other features other than the colour which would cause consumers to identify the boot as a Timberland boot, effectively undercutting the very position Timberland was trying to assert.

Timberland’s inability to show how its sales and advertising efforts caused consumers to identify the claimed configuration also did not help. The prevalence of similar-looking boots in the market and Timberland’s lack of enforcement against third parties led the court to conclude that the claimed configuration did not indicate the source.

The Fourth Circuit’s decision

Unsurprisingly, Timberland appealed. Unfortunately for Timberland, the court of appeals affirmed the district court’s decision, even with the International Trademark Association filing an amicus brief in support of Timberland.

In its decision, the court highlighted that Timberland did not seek to register every aspect of its boot, limiting its claims to the numbered items shown below.