Timberland Loses Fourth Circuit Bid to Protect Trade Dress of Its Iconic Boots

On Monday, the U.S. Court of Appeals for the Fourth Circuit rejected Timberlands has attempted to protect its popular boot design. The court explained that the district court did not err in finding that the company failed to prove that the design had acquired distinctive meaning.

Although the Timberlands brand name is still protected as a trademark, the widely recognized design of the boots is not. Also known as Timbs, the boots' iconic cultural significance is undeniable. Most notably, Grammy-winning producer Timbaland's stage name is a nod to outfitting.

During its rise in the 1980s and 1990s, the boot was even nicknamed the Air Jordan of boots. However, according to Monday's ruling, the design of the boots does not have a distinctive meaning that identifies them as Timberlands. Although the brand's distinctive tree logo remains protected under the Lanham Act, the boots' design is not distinctive enough to receive the same protection.

In other words, despite their visibility in popular culture, Timberlands don't look or perform much differently than other hiking or construction boots.

TBL vs. USPTO

TBL Licensing, LLC first submitted its trademark to the United States Patent and Trademark Office (USPTO) in 2015. In its initial application, the company outlined what it considered to be the five main characteristics of the trademark , including its tube-shaped ankle collar and hexagon. eyelets. The application did not include the boots' unique outsole which features TBL's already registered tree logo and the word mark TIMBERLAND.

TBL's decision to exclude certain design features of the boot in its application may have been strategic, according to the Fourth Circuit. If it had included, for example, the inner ankle collar or the cleated sole, the overall risk of a functionality discovery would likely have increased, the court said. However, even excluding the more practical elements of the boot, TBL failed to prove that the public associated TBL's claimed features exclusively with Timberland, a footnote to the opinion states.

TBL also omitted its iconic wheat yellow color from this particular application, as it had previously tried and failed to file a trademark for that color.

Believing that the design was functional and non-distinctive as a whole, the USPTO examining attorney refused to register the design. TBL appealed. The Trademark Trial and Appeal Board (TTAB) upheld the decision in 2021, and TBL challenged the decision in the United States District Court for the Eastern District of Virginia. Today, the Fourth Circuit’s decision reaffirmed the USPTO’s original decision.

Here, we must affirm the district court unless it committed reversible error in concluding both that TBL's claimed design is functional and that the same design is not distinctive, the Fourth Circuit wrote .

Functionality

The Lanham Act's broad definition of a trademark, as any word, name, symbol, or device, or any combination used or intended to be used to identify and distinguish products, excludes functional designs.

Regarding the functionality of Timberlands, the court wrote:

The design features of the boot being applied for as a whole do what those features are supposed to do in any good boot: they make it comfortable, they make it durable, they make it waterproof, and they make it fit intended uses. including hiking in a variety of environments and completing certain work projects where toe protection is necessary.

TBL argued that the district court misinterpreted the features TBL sought to register in its application and therefore could not make an informed decision about their functionality. In response, the Fourth Circuit stated that even if it had failed to analyze the drawing as a whole or had improperly departed from the drawing drawn and described by TBL in its application, the limited drawing provided still lacked distinctive meaning.

Secondary meaning

With this, TBL attempted to establish a secondary meaning behind its design. However, the district court found that the company had failed to establish the formidable burden of proof necessary for such a claim.

In its consumer surveys, TBL used grayscale photographs of the boot instead of the drawn diagram it had submitted in its application. So, he used features of the boots' design that were not part of the application to falsely suggest that the boot was a Timberland, the court said. TBL declined to challenge court criticism of its consumer survey, instead pushing for the Timberlands ad to be given more weight in determining secondary meaning. Once again, the court said, the ads used images of the entire boot, including its iconic wheat yellow hue, beyond what was submitted in the application.

Despite evidence of commercial success provided by TBL via sales figures, the Fourth Circuit agreed with the district court that TBL had not provided sufficient evidence to prove that consumers purchased the boots specifically because of the listed features. in their request. Similarly, he held that the district court did not err when it held that Timberlands' extensive media coverage did not highlight the aspects of the boot design described in the petition. Additionally, attempts to plagiarize the boots have not proven their secondary significance. Imitation of design features solely to take advantage of the functionality of the design does not establish secondary meaning, the Fourth Circuit wrote. In fact, the district court found that [t]Saturation of the market with boots that look alike actually undermined TBL's claim of secondary meaning, and the appeals court said this analysis was not an obvious error.