Emblematic enough for brand protection?

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by Dennis Crouch

TBL Licensing, LLC v Hirshfeld, File n ° 1: 21-cv-00681 (ED Va. June 04,
2021)

I have already written about the TTAB decision denying TBL’s attempt to register the shape of its Timberland boots as a protectable mark. Squat, Iconic Timberland Boots – Commercial Dress Worthy? Now the company has filed a civil action in the Eastern District of Virginia seeking a court order stating that TBL is entitled to a registration. TBL provides its basic argument as follows:

The TTAB wrongly ignored the powerful evidence of TBL’s secondary significance, including third-party sales, publicity and recognition (with various examples of high-profile media coverage and unsolicited attention) that TBL has amassed at the over four decades of consistent and substantially exclusive use of the Timberland Boot Trade dress. In doing so, the TTAB refused to register what has been considered “one of the most recognizable shoes of all time”. The TTAB decision should therefore be overturned and, given that the Timberland Boot Trade Dress is not functional de jure, TBL’s request should be approved for publication. Alternatively, the case should be referred for consideration of the functionality issue.

TBL complaint.

The TTAB gave little weight to the fact that the agency issued registration certificates on many different shoe models. On the flip side, that same story-based argument is likely to be more compelling for a district court judge.

There is no right to a jury trial in this type of case. To further reduce costs, the parties agreed to forgo a live trial altogether and instead decide the case on the basis of the submitted case file.

The parties have agreed to authorize the Court to adjudicate this case on summary judgment and to resolve any dispute concerning important factual issues on a submitted case.

This is apparently the same process used in other recent civil trademark actions. Booking.com BV v. Matal, 278 F. Supp. 3d 891, 900 (ED Va. 2017) (‘The parties have’ expressly agree[d] that if the Court determines after considering the factums and summary judgment evidence that there is a material question of fact, the Court is authorized to resolve such a factual dispute. ‘ “); Seacret Spa Intl. against Lee, 1: 15CV405 (JCC / IDD), 2016 WL 880367, at * 2 (ED Va. Mar. 8, 2016) (“The parties have agreed that.. The Court may resolve these disputes on the basis of the record before this . “); Autodesk, Inc. v Lee, 1: 13-CV-1464 AJT / JFA, 2014 WL 5500799, at * 1 (ED Va. October 30, 2014) (the parties “have stipulated that the Court should resolve all material factual disputes without further proceedings based on the summary judgment file. ”).

I await the final briefing in February 2022 and a decision later in the spring.

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Iconic Timberland Boots – Trade-worthy Outfit?

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