Fourth Circuit Affirms Timberland Lacks Trade Presentation Design Elements

The United States Court of Appeals for the Fourth Circuit upheld a district court's grant of summary judgment in a trademark dispute, holding that the district court did not err concluding that a subset of design elements lacked distinctiveness in the public eye.TBL Licensing, LLC v. Katherine Vidal, Director of the United States Patent and Trademark OfficeCase No. 23-1150 (4th Cir. April 15, 2024) (QuattlebaumGrégory, Benjamin, JJ.)

TBL Licensing is commonly known as Timberland, the prominent shoe manufacturer. Timberland attempted to register specific design elements of its popular boots as protected trade dress with the U.S. Patent and Trademark Office (PTO). In its application, Timberland provided a detailed written description of the design elements of the boots it sought to register as protectable trade dress. Timberland has also included a drawing of these design elements.

The PTO denied Timberland's application, finding that the design was functional and lacked distinctive character. Timberland appealed to the Trademark Trial & Appeal Board, which affirmed. Timberland subsequently challenged the Board's decision in the U.S. District Court for the Eastern District of Virginia. The district court granted summary judgment in favor of the PTO because the Timberland design was functional and had not acquired distinctive character. Timberland appealed.

Timberland argued that the district court improperly segmented the design during its functional analysis. Timberland argued that the district court failed to meaningfully consider the design as a whole and, even if it did, the court erred in considering specific factors, including the availability of alternative designs and the simplicity of manufacturing the designs. The court also relied on inappropriate patents and advertisements as evidence to support its conclusion about functionality, an analysis that Timberland said was improper.

The Fourth Circuit affirmed the district courts’ decision. While recognizing the potential error related to the district courts' failure to analyze the design comprehensively, the Court ultimately concluded that the limited design elements that Timberland sought to register lacked secondary meaning, a crucial element for protection of trade dress. The Court used a secondary meaning analysis to assess public perception of the Timberlands design and considered various factors, including advertising expenditures, consumer research, sales success, media coverage unsolicited, attempts at imitation and duration of exclusive use.

Applying each factor, the Fourth Circuit determined that the district court did not clearly err in finding that the design elements lacked distinctiveness. The Court explained that the district court highlighted flaws in Timberlands' consumer survey, noting leading questions and a lack of attention to claimed design features. The district court also noted that Timberland's advertising expenditures did not effectively link the claimed design features to Timberland in the minds of consumers. Timberland's arguments regarding sales success, media coverage and attempts at plagiarism also proved insufficient to establish secondary significance. Finally, the presence of similar-looking boots from other manufacturers undermined Timberland's claim to exclusivity in the use of this model.

Lacking direct evidence from a consumer survey, the Fourth Circuit determined that Timberland's circumstantial evidence failed to establish consumer recognition of the specific design elements that Timberland sought to register. The Court also recognized that the predominance of similar products in the market undermined the uniqueness of the designs as an indicator of the brand's association with Timberland.

Practical note:When seeking to protect the trade dress of product designs, it is imperative to demonstrate both non-functionality and distinctiveness. This case reminds us of the need to thoroughly analyze and present direct evidence to establish the uniqueness and non-functional aspects of a design when registering trade dress.