Determination Of Whether Trade Dress Is Product Design Is A Factual Question

In a case of first impression, In re Slokevage (No, 05-1389; March 21, 2006), the Federal Circuit holds that the question of whether trade dress is product design is a factual question, and affirms the Trademark Trial and Appeal Board's finding that trade dress for certain clothing was product design and therefore not inherently distinctive. Substantial evidence is found to support the TTAB's requirement for a disclaimer of a portion of the mark.

Slokevage had filed an application to register a configuration that consisted of a label with the words “FLASH DARE” in a V-shaped background, and cut-out areas located on each side of the label. The cut-out areas consisted of a hole in a garment and a flap attached to the garment with a closure device. The TTAB refused registration on grounds that the mark was product design. Applicant appealed, in part, on the assertion that the question of whether trade dress is product design is a legal, not factual, question.

The panel holds that “the determination of whether trade dress is product design is a factual finding because it is akin to determining whether a trademark is inherently distinctive or whether a mark is descriptive, which are questions of fact. As to Slokevage's mark, the panel, relying on Wal-Mart Stores, Inc. v. Samara Bros., Inc. , 529 U.S. 205, 54 USPQ2d 1065 (2000), observes that “[C]onsumers may purchase [Applicant's] clothing for the utilitarian purpose of wearing a garment or because they find the appearance of the garment particularly desirable. Consistent with the Supreme Court's analysis in Wal-Mart , in such cases when the purchase implicates a utilitarian or aesthetic purpose, rather than a source-identifying function, it is appropriate to require proof of distinctiveness.”