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by Mark Malek

Imagine my surprise when I received my daily IP update from Patently-O and read an article noting that the Chippendale Cuffs and Bowtie were not worthy of incontestable trade dress status.  (Incidentally, Professor Dennis Crouch writes the Patently-O blog and I find it to be a very informative intellectual property blogs.  Another recommendation is IPWatchdog written by Gene Quinn.) 

Back to the matter at hand - a link to the opinion from the Federal Circuit can be found here.  This matter arose because Chippendales sought registration of the “Cuffs and Collar” costume as trade dress that is “inherently distinctive.”  In 2003, however, the Examining Attorney at the Trademark Office found that the “Cuffs and Collar” outfit was only entitled to registration because of the mark’s acquired distinctiveness, not because the mark was inherently distinctive.  The real issue, however, revolves around whether or not the mark could be considered incontestable.  A mark can be considered incontestable if it is continuously registered on the Principle Register at the Trademark Office for five years.  Finding that the mark had acquired distinctiveness, instead of being inherently distinctive, essentially adds five years to the clock for Chippendales (a mark can acquire distinctiveness by being registered for five years and, therefore, it would take another five years for the mark to become incontestable). 

As indicated by the Federal Circuit, an incontestable trademark is treated as conclusive evidence of the validity of the trademark, as well as its registration, ownership, and the exclusive right of the owner to use the mark in commerce.  This was very important for Chippendales as they were about to get involved in a trademark infringement action.  When getting into a trademark infringement suit, it is preferable for that the trademark in question have incontestable status.  Although this is, by no means, a requirement, it essentially eliminates one of the steps in litigation.  For example, if you are a trademark owner and you file a trademark infringement suit, you can be sure that one of the first things coming back your way will be a counterclaim requesting that the court invalidate your trademark for any number of reasons.  With incontestable status, however, most of the bullets will be taken out of that gun. 

I found this case to be a bit entertaining and thought that many of our readers – especially you females out there, would enjoy it.  One of the key points that I would like to make with this brief article, however, is that incontestable status is not automatically granted.  It is something that you must request the Trademark Office to issue.  If you are a trademark owner, and your trademark has been issued on the Principle Register for more than five years, please look into whether or not you have requested incontestable status for your trademark.  This can only enhance your protection, especially if you are put in the situation where you will have to litigate to enforce your trademark rights.