Chippendales USA, Inc.

Trademark Trial and Appeal Board

Mar 25, 2009

No. 78666598 (T.T.A.B. Mar. 25, 2009)

Hearing: Mailed:
December 4, 2008 March 25, 2009
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Chippendales USA, Inc.
________

Serial No. 78666598
_______

Stephen W. Feingold of Day Pitney LLP for Chippendales USA,
Inc.

Steven R. Berk, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).1
_______

Before Bucher, Walsh and Wellington, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

Chippendales USA, Inc. (applicant) has applied to
register the mark shown here, also referred to as the
“Cuffs & Collar Mark,” for services now identified as,
“adult entertainment services, namely exotic dancing for

1 Other examining attorneys handled this application prior to
this appeal.
THIS OPINION
IS A PRECEDENT OF THE
T.T.A.B.
Serial No. 78666598
2
women in the nature of live performances” in International
Class 41.2

The application describes the mark as follows: “The mark
consists of a three-dimensional human torso with cuffs
around the wrists and neck collar comprising of (sic) a bow
tie. The dotted lines in the drawing indicate placement of
the mark. The matter shown by the dotted lines is not
claimed as a part of the mark and serves only to show the
position of the mark.” The application also includes the
following statement: “Color is not claimed as a feature of
the mark.” The Cuffs & Collar Mark is a key part of the
costume or uniform applicant’s employees wear in rendering
the identified adult entertainment service.
The Examining Attorney has finally refused
registration on the ground that the mark is not inherently
distinctive under Trademark Act Sections 1, 2 and 45, 15
U.S.C. §§ 1051-1052, 1127. Applicant has appealed.

2 Application Serial No. 78666598, filed on July 8, 2005,
claiming first use anywhere and first use in commerce on January
1, 1979.
Serial No. 78666598
3
Applicant and the Examining Attorney have filed briefs, and
both took part in an oral hearing on December 4, 2008.
We affirm.
Applicant operates the CHIPPENDALES dancers, a cast of
exotic male dancers who claim to provide Broadway-show-like
performances, across the United States and around the
world.3 Applicant claims that this was the first all-male,
Las Vegas-style dance act. Applicant’s show, first
established in 1978, has been featured on a wide variety of
television entertainment programs, talk shows, and it has
been the subject of a popular parody on Saturday Night
Live. Also, the sale of collateral goods, such as
calendars and videos, are a critical part of applicant’s
marketing success. In 1979 applicant’s performers began to
wear the cuffs and collar without a shirt – the allegedly
arbitrary imagery – that applicant claims has been the
cornerstone of the company’s promotional efforts since
then. According to applicant’s expert, Dr. Shteir, the
Cuffs & Collar Mark “… is obviously an abbreviated form of
black tie tuxedo dress.” Shteir Dec. at 6. Dr. Shteir
also states that the tuxedo is a “… symbol with strong
associations to wealth and social prestige.” Id.

3 The identification of services in the application does not
limit the services to those performed by male dancers.
Serial No. 78666598
4
Applicant renders its adult entertainment services
nearly exclusively to female audiences. The male
performers generally begin their performances wearing an
“outer costume” in addition to the “cuffs and collar,”
including black trousers. See, e.g., Shteir Dec., Exh. 1.
The outer costume may also include other elements, such as
the attire of a doctor, teacher, or member of the military
to project a “fantasy.” Applicant’s Brief at 12. See,
e.g., Shteir Dec., Exh. 2 at 81. In the course of the
performance the performers generally remove all clothing
other than the “cuffs and collar” and a G-string; the
performance emphasizes erotic movements. Though there is
no nudity, the performances can be fairly characterized as
a strip show. The performances also generally involve some
physical contact between audience members and the
performers. Indeed, the point of the performance is to
provide a provocative, revealing, adult-entertainment
experience for the audience focused on the minimal attire
of the performers, or more accurately the maximum exposure
of the performers’ bodies.
By way of background, applicant has already
registered this same Cuffs & Collar Mark for the
essentially same services, that is, “adult entertainment
services, namely exotic dancing for women,” in Registration
Serial No. 78666598
5
No. 2694613 based on a claim of acquired distinctiveness
under Trademark Act Section 2(f), 15 U.S.C. § 1052(f).
In fact, that prior registration is not only active, but
has achieved incontestable status under Trademark Act
Section 15, 15 U.S.C. § 1065.
Applicant’s purpose in filing the application at
issue here is to secure a registration for the same mark,
but without reliance on or reference to Section 2(f) and
acquired distinctiveness. Applicant argues that we
should entertain this issue because, as a result of
actions by the assigned examining attorneys, applicant
was denied the opportunity to secure a registration
without reliance on Section 2(f) in the application which
resulted in the issuance of Registration No. 2694613 and
in a subsequent application. Applicant’s objections to the
handling of its prior applications are not before us in
this case.4 In this case, we will proceed to consider
whether applicant’s Cuffs & Collar Mark is entitled to
registration on the basis that it is, or was, inherently
distinctive.

4 Applicant claimed that in the earlier applications it attempted
to argue first that its mark was registrable on the basis that
the mark was inherently distinctive, and in the alternative, that
its mark had acquired distinctiveness, but that it was not
permitted to do so.
Serial No. 78666598
6
However, while we will consider whether applicant is
entitled to another registration for the same mark on the
basis that the mark is inherently distinctive, we note
that Registration No. 2694613 is entitled to the full
benefits accorded all registrations under Trademark Act
Section 7(b), 15 U.S.C. § 1057(b), as well as the
additional benefits accorded incontestable registrations
under Section 15. By rendering an opinion here, we do not
intend to suggest that any registration which would issue
without regard to Section 2(f) would afford applicant
rights which would differ in any way from those rights
which the existing registration, which does reference
Section 2(f), already affords applicant.5
Furthermore, we note the challenging circumstances
which attend any attempt to answer the question which this
appeal poses, that is, whether applicant’s mark is, or ever
was, inherently distinctive. Applicant argues, and we
agree, that we must consider whether applicant’s mark was
inherently distinctive at the time applicant began to use
the mark nearly 30 years ago. However, applicant’s use and
promotion of its mark over 30 years since that time, along

5 For the record, we reject out of hand the Examining Attorney’s
request that Registration No. 2694613 “be abandoned forthwith” in
the event this application proceeds to registration. Examining
Attorney’s Brief at 3, n.2. The Trademark Act provides no such
authority in deciding an ex parte appeal.
Serial No. 78666598
7
with its enforcement efforts, have undoubtedly had a major
impact on relevant consumers’ perception of the mark. As a
result of that history, it is difficult, to say the least,
to discern how relevant consumers would have perceived the
mark at the time, before and in the absence of applicant’s
subsequent activities.6
Applicant filed the application resulting in
Registration No. 2694613, apparently the first application
applicant ever filed for the Cuffs & Collar Mark, on
November 27, 2000, over twenty years after it began to use
the mark. In acting on that application, the USPTO found
applicant’s claim of acquired distinctiveness sufficient to
register the mark in Registration No. 2694613. Applicant’s
use and promotion of the mark has continued, totaling
nearly 30 years to date. The record in this application
includes evidence of further, extensive use and promotion
of the mark, as well as evidence of applicant’s aggressive
and thorough efforts to enforce its rights in the mark.
For example, in a declaration dated October 19, 2006,
applicant’s counsel discusses, “… an action [by applicant]

6 We are not suggesting that registrability should be determined
at any time other than at the time the application is pending.
See In re Thunderbird Products Corp., 406 F.2d 1389, 160 USPQ
730, 732-733 (CCPA 1969); In re Minnetonka, 212 USPQ 772, 777
(TTAB 1981). Theoretically, if the mark was inherently
distinctive when applicant began use, it remained so thereafter.
Serial No. 78666598
8
in the District of New Jersey against a company using
CHICKENDALES on slot machines that also featured dancing
chickens wearing cuffs and collars.” Attachment to
Applicant Response dated October 23, 2006.
Turning to the merits, applicant argues that this is a
case of first impression and proposes that we adopt a new
test to determine whether its mark is inherently
distinctive. Applicant proposes the following new test:
The inquiry begins by asking two questions:

1. Is the costume used in a channel of trade
where consumers are conditioned through their
past experience to presume a source
identification function?

2. Is the costume immediately associated
with an iconic larger than life character
where the costume acts as an intrinsic
symbol for the character?

If the answer to either question is yes, then
the costume is inherently distinctive unless the
costume is nothing more than a common depiction
of a familiar symbol that preexisted the costume.

If the answer to both (1) and (2) is no,
then the costume is not inherently distinctive.

Applicant’s Brief at 8-9.

We reject this suggestion. However, we will discuss
the proposed test further below in conjunction with our
discussion regarding applicant’s evidence. In deciding
this appeal on the merits we will apply the test set forth
in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d
Serial No. 78666598
9
1342, 196 USPQ 289 (CCPA 1977), a test which the Board has
applied effectively for more than 30 years in a wide
variety of circumstances. Specifically, under Seabrook, we
must consider the evidence related to applicant’s Cuffs &
Collar Mark and determine:
1. whether the Cuffs & Collar Mark is a common
basic shape or design;

2. whether the Cuffs & Collar Mark is unique or
unusual in the particular field;

3. whether the Cuffs & Collar Mark is a mere
refinement of a commonly-adopted and well-known
form of ornamentation for a particular class of
goods or services viewed by the public as a dress
or ornamentation for the goods or services; or

4. whether the Cuffs & Collar Mark is capable of
creating a commercial impression distinct from
any accompanying words.7

Id. at 291.
The Board has observed that subsequent cases serve to
“complement” the test set forth in Seabrook, and thereby
provide additional useful guidance. In re Creative Beauty
Innovations Inc., 56 USPQ2d 1203, 1206 (TTAB 2000).
Accordingly, in our analysis we also look to more recent
authoritative cases, including most notably the Supreme
Court’s opinions in Wal Mart Stores v. Samara Bros.,
529 U.S. 205, 54 USPQ2d 1065 (2000), Qualitex Co. v.

7 Factor 4 is not relevant in this case.
Serial No. 78666598
10
Jacobson Products Co., 514 U.S. 159, 34 USPQ2d 1161 (1995),
and Two Pesos Inc. v. Taco Cabana Inc., 505 U.S. 763, 23
USPQ2d 1081 (1992).
In Two Pesos, an infringement case arising under
Trademark Act Section 43(a), 15 U.S.C. § 1125(a), the
Supreme Court held that trade dress employed in the
rendering of restaurant services could be, and in that case
was, inherently distinctive. Two Pesos Inc. v. Taco Cabana
Inc., 23 USPQ2d at 1083.
Furthermore, at the risk of stating the obvious, while
trade dress used with services may be inherently
distinctive, not all such trade dress is inherently
distinctive. The facts of each case dictate that
determination. In re File, 48 USPQ2d 1365 (TTAB 1998)
(trade dress for bowling alley services consisting of
“tubular lights running lengthwise down bowling lanes
projecting over the gutters” held not inherently
distinctive because “… customers for bowling alley
entertainment services would regard applicant's trade dress
simply as an element of interior decoration and would not,
therefore, immediately perceive such trade dress as a
source indicator”); In re Hudson News Co., 39 USPQ2d 1915
(TTAB 1996), aff'd per curiam, 114 F.3d 1207 (Fed. Cir.
1997) (two applications for trade dress for retail store
Serial No. 78666598
11
services held not inherently distinctive; the marks were
described as, (1) “the color blue utilized as a motif in
association with the store name and other trade dress
elements such as carpeting, neon lighting, publication(s)
display panels and surrounds, shelving and employee
uniforms,” and (2) “a cool bluish, clean and salubrious
newsstand shopping environment. The blue motif is created
and enhanced by blue neon lighting associated with the
store name and publication(s) displays, blue carpeting,
blue accents, and blue employee uniforms. The blue motif
is further enhanced by extensive use of clear, acrylic
plastic shelving and coverings for displays which both
reflect and allow for the passage of the reflected bluish
light throughout”).
In Wal-Mart, another case under Section 43(a), the
Supreme Court drew a distinction between trade dress
residing in product packaging and trade dress residing in
the design of the product itself, and held that packaging
trade dress could be inherently distinctive while product
trade dress could not. Wal Mart Stores v. Samara Bros., 54
USPQ2d at 1069. Rather, in the case of product design, the
Court held that a showing of acquired distinctiveness is
always required to establish trademark rights. Id. at 1068
-69.
Serial No. 78666598
12
While the Supreme Court observed that consumers may be
predisposed to regard packaging for goods as an indicator
of sources, the Court also recognized that there are cases
where it is not reasonable to assume that predisposition.
Id. at 1068. In cases of trade dress used in connection
with services, it is not feasible to categorize such cases
as either a “product” or “packaging” case. Rather, we must
simply assess whether it is reasonable to assume that the
consumer is predisposed to view the trade dress as a source
indicator. See, e.g., In re Hudson News Co., 39 USPQ2d at
1923.
Accordingly, as a threshold matter we find that the
mark at issue here, like the service mark in Two Pesos, is
a form of trade dress which may be inherently distinctive.
Whether or not the Cuffs & Collar Mark is inherently
distinctive is the question we must answer.
As a further threshold matter we note that the
Examining Attorney does not bear a heavy burden in
establishing a prima facie case that a mark is not
inherently distinctive. The Examining Attorney need only
establish a “reasonable predicate” to make the necessary
prima facie showing. In re Pacer Technology, 338 F.3d 1348,
67 USPQ2d 1629, 1632 (Fed. Cir. 2003), citing, In re Loew’s
Serial No. 78666598
13
Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 868 (Fed. Cir.
1985).
With that foundation, we will proceed to apply the
Seabrook test to the evidence in this case.
The relevant Seabrook factors overlap to a great
extent in this case. Indeed, the arguments of both
applicant and the Examining Attorney, quite understandably,
tend to blur the distinctions between the factors. Before
discussing the specific factors, we will address the more
significant arguments which relate to the Seabrook test
generally.
Applicant argues that the Cuffs & Collar Mark is a
“uniform,” not a “costume,” that the Cuffs & Collar Mark is
highly unusual in that it separates the cuffs and collar
from the shirt or other garment and that the Cuffs & Collar
Mark had never before been used in rendering exotic adult
entertainment services targeted to women.
In his brief and at oral hearing, the Examining
Attorney argues that, inasmuch as the Office has
demonstrated that it is not unusual, and even common, for
exotic dancers to perform in various styles of exotic
dress, this first prong of Seabrook is satisfied. The
record includes examples of various provocative costumes
exotic dancers may employ. See, e.g., Applicant’s
Serial No. 78666598
14
Response of June 19, 2007, Attachment from
flirtylingerie.com.
Applicant, and to a lesser extent the Examining
Attorney, devote significant attention to the costume/
uniform distinction. Applicant argues from the premise
that uniforms are more likely to be perceived immediately
as source indicators, and therefore, are generally
inherently distinctive. Applicant argues that the Cuffs &
Collar Mark is a uniform. Applicant also argues, in the
alternative, that even if the Cuffs & Collar Mark is a
costume, that its evidence shows that it is nonetheless
inherently distinctive.
We do not find the uniform versus costume distinction
particularly helpful here - it begs the ultimate question.
Furthermore, it leads to analysis which is too simplistic
and facile.
For example, in posing the “uniform” argument
applicant relies heavily on the opinion in Dallas Cowboys
Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 467 F. Supp.
740, 201 USPQ 740, 746 (S.D.N.Y. 1979). Applicant argues
that the Court found the uniforms of the Dallas Cowboys
cheerleaders -- trade dress analogous to that before us --
inherently distinctive. Applicant’s Brief at 10. The
opinion does include some arguably ambiguous language on
Serial No. 78666598
15
this point in the statement: “… the specific elements of
the uniform – their color, design, and ornamentation – are
distinctive and arbitrary, and thus susceptible of becoming
a valid trademark and service mark.” Dallas Cowboys
Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 201 USPQ at
746. Elsewhere the opinion is unambiguous in stating that
the Court’s basis for determining that the trade dress
functioned as a mark was acquired distinctiveness, not
inherent distinctiveness. Earlier in the opinion the Court
states:
The evidence further shows that the Dallas
Cowboys Cheerleaders uniform has come to be
identified as the distinctive uniform of
plaintiff's group, and is associated with the
Dallas Cowboys Cheerleaders as distinguished from
other entertainment groups. This identification
and association have been acquired through use of
the uniform in Dallas Cowboys Cheerleaders
performances and appearances, both live and on
television, over a period of about seven years,
and through the use of the uniform in the
licensed products already described.

Id. at 744.
Later in the opinion the Court also states:
The evidence shows that plaintiff, through
promotion and use of the uniform, has established
a strong identification between the uniform and
the particular entertainment furnished by the
Dallas Cowboys Cheerleaders, as distinct from
cheerleading or other entertainment furnished by
other parties, and also identifying the
particular products licensed by plaintiff. Thus,
the evidence shows that the uniform has acquired
a secondary meaning associated with the Dallas
Cowboys Cheerleaders.
Serial No. 78666598
16

Id. 746-747. Thus, in this opinion, we find strong support
for the proposition that “uniforms” of the general type at
issue here are neither unusual nor inherently distinctive.
We also note that certain other types of uniforms used in a
commercial setting or in organizations like the military
frequently include explicit source indicators, for example,
company logos, insignia, or other similar material.
Applicant’s Cuffs & Collar Mark is devoid of any other
explicit source indicators.
Applicant’s alternative argument, based on the
“costume” theory, relies heavily on Red Robin Enterprises,
Inc., 222 USPQ 911, 912 (TTAB 1984) for the proposition
that, even if its Cuffs & Collar Mark is construed to be a
costume, it too is inherently distinctive like the mark in
Red Robin. However, applicant discounts significant
differences between the cases. Most importantly we cannot
discount, as applicant does, the Board’s explicit reference
to the fact that the costume included an “RR logo”; the
Board states, “… if the costume in question is sufficiently
distinctive (and we believe applicant's costume with its
‘RR’ logo and other unique features meets this
requirement), it can and will serve to indicate the
sponsorship or source of such services.” Id. at 912. Cf.
In re DC Comics, Inc., 689 F.2d 1042, 215 USPQ 394 (CCPA
Serial No. 78666598
17
1982) (drawings of fictional comic characters held to
function as trademarks for toy doll figurines of those
characters); In re Penthouse International Ltd., 565 F.2d
679, 195 USPQ 698 (CCPA 1977) (design of key may serve as
trademark for jewelry, although jewelry product itself
includes three-dimensional portrayals of mark); In re
Paramount Pictures Corp., 213 USPQ 1111 (TTAB 1982)
(television character names determined to serve as a
trademark although used and presented as major
ornamentation for the decalcomania goods involved); In re
Florida Cypress Gardens, Inc., 208 USPQ 288 (TTAB 1980)
(designation consisting of name of clown is registrable for
entertainment services despite fact that name also
identifies a fictitious character played by performers in
applicant’s shows). Of course, the Cuffs & Collar Mark
does not include any logo. Accordingly, the Red Robin case
and similar “costume” cases fail to support applicant’s
contention that the Cuffs & Collar Mark is an inherently
distinctive costume.
Accordingly, for purposes of our analysis we will
generally assume that applicant’s Cuffs & Collar Mark is a
uniform, though we find the distinction inconsequential.
Turning to the specific Seabrook factors, first we
consider whether the Cuffs & Collar Mark is a common basic
Serial No. 78666598
18
shape or design. The Examining Attorney points out that
exotic dancers often start a show wearing some kind of
outfits, for example, a stripper representing either a
doctor wearing a stethoscope, or a construction worker
wearing a utility belt, or a cowboy wearing chaps and a
ten-gallon hat. Applicant discounts these examples as
inapposite.
In evaluating how the mark would have been perceived
at the time applicant began to use it, we find relevant the
fact that persons performing the same or similar adult
entertainment services, whether male or female, routinely
wear costumes or uniforms which are, above all, revealing
and provocative. Applicant does not seriously dispute the
general proposition that adult entertainers wear revealing
and provocative costumes, usually connected with some sort
of fantasy.
The Examining Attorney provides examples of various
provocative costumes in attachments to the Examining
Attorney Office Action of December 18, 2006. In fact,
among the costumes available for purchase are a matching
set of male and female costumes, each consisting of a cuffs
and collar set and a G-string. See Attachments to Office
Action of December 18, 2006 from flirtylingerie.com,
Serial No. 78666598
19
costumzee.com and nextag.com.8 The Cuffs & Collar Mark fits
well within the general type of costumes or uniforms in use
in the field. It evokes the fantasy of wealth and
privilege, a man in a tuxedo, and it is revealing and
provocative.
In sum, we conclude that the cuffs and collar
costume/uniform, when viewed apart from applicant’s use and
promotion of the Cuffs & Collar Mark, is the same basic
type of revealing and provocative attire worn by adult
entertainers. Thus, we conclude that, when viewed in
context, the Cuffs & Collar Mark is a common basic shape or
design.
Next we must consider whether the Cuffs & Collar Mark
is or was unique or unusual in the particular field.
The Examining Attorney argues again that the Cuffs & Collar
Mark is not unique for these services inasmuch as it is of
the same general type as others and not unusual in the
field. By contrast, applicant argues that, because all
strippers begin their routine with some kind of fantasy
outfit, these examples demonstrate non-trademark symbols
for the easily-recognizable occupations of real life

8 Our sense of propriety dictates that we not display these
examples in this opinion. Applicant alleges and we concede that
all current examples of such costumes could be imitations of, or
even infringements of, applicant’s Cuffs & Collar Mark.
Serial No. 78666598
20
characters used as part of a story. Applicant argues that
this contrasts with the cuffs and collar expressly designed
to be part and parcel of applicant’s identity. Applicant
also argues that the mere fact that the utility belt, like
the cuffs and collar, remains on the performer after the
shirt is discarded does not compel a finding that its cuffs
and collar are usual in the field of male exotic dancing.
The discussion above regarding “common designs” also
points to the answer to the question as to whether
applicant’s mark was unique or unusual from the outset –
the answer is no. That is, as we noted, the Cuffs & Collar
Mark is a simple variation on revealing and provocative
costumes or uniforms generally in use in the adult-
entertainment, exotic-dancing field.
Also, applicant’s expert, Dr. Shteir, references an
article which states, “The collar and cuffs [referring to
applicant], like the bunny suit which inspired them, has
become a trademark recognized, wherever women take their
entertainment seriously, as a symbol of professional and
classy sexy fun.” Shteir Dec., Exhibit 2 at 72 (emphasis
added). Thus, applicant’s own evidence suggests that its
Cuffs & Collar Mark, at its inception, was not something
Serial No. 78666598
21
new under the sun.9 Furthermore, among the examples of
exotic costumes in the Examining Attorney’s evidence we
find an example of the “Sexy Bunny Costume,” which
features, among other things, the cuffs and collar,
identical to applicant’s Cuffs & Collar Mark. See
Attachment to Office Action of December 18, 2006 from the
costumecraze.com site. The female costume is based on the
Playboy Bunny costume.
In general, applicant assigns too much importance to
the fact that it was the first to use the cuffs and collar
without a shirt on male dancers performing for female
audiences. While applicant may have been the first to do
so, the evidence stating that its costume was “inspired” by
the bunny costume, an artifact in adult entertainment,
suggests that applicant’s Cuffs & Collar Mark was not
necessarily unique in the broader field of adult
entertainment when applicant adopted it.
Applicant emphasizes the distinction between its
services and adult entertainment services offered to men.
However, applicant takes this distinction too far. We find

9 At the oral argument, when we asked applicant’s counsel about
the relationship between the Cuffs & Collar Mark and the cuffs
and collar used in the bunny costume, counsel was reluctant to
concede that the bunny costume even included the cuffs and
collar. Applicant’s own evidence provides a clear answer on this
point.

Serial No. 78666598
22
the evidence that the bunny costume predated and is
referred to as inspiring applicant’s Cuffs & Collar Mark
relevant to our determination as to whether its mark was
unique or unusual in the field. However, we would reach
the same conclusions with or without this evidence.
More importantly, even if applicant was the first, and
the one and only, party to use the cuffs and collar uniform
in the field, whether it be in the male or female adult
entertainment field, that fact alone would not be
sufficient to render it inherently distinctive. In re
Hudson News Co., 39 USPQ2d at 1924. The more important
fact in our overall analysis is that the cuffs and collar
are not unusual in the field of adult entertainment
generally, nor in the field of adult entertainment for
women.
In sum, we conclude that, at the time applicant began
to use the Cuffs & Collar Mark it was not unique or unusual
in the field.
Next we must consider whether the Cuffs & Collar Mark
was a refinement of an existing form of ornamentation for
the particular class of services. We find that it was such
a refinement for the same reasons, and based on the same
evidence, discussed in our treatment of the first two
factors.
Serial No. 78666598
23
Finally, with regard to the Seabrook factors, we have
considered all relevant evidence and argument and conclude
that the Examining Attorney has provided a reasonable
predicate which is sufficient to establish a prima facie
case that the Cuffs & Collar Mark is not inherently
distinctive. We conclude further that applicant has failed
to present sufficient evidence to establish that its mark
was inherently distinctive at the time of adoption, and has
not, therefore, successfully countered that predicate.
See, e.g., In re Hudson News Co., 39 USPQ2d at 1924.
Before closing, for completeness, we wish to discuss
further the evidence applicant has offered in support of its
position. It is apparent that applicant has gone to considerable
effort and expense to present this evidence. The evidence is
presented, among other things, to support findings it urges us to
make under its “new test” for inherent distinctiveness.
The centerpiece of applicant’s evidence is the declaration
of Dr. Shteir, an expert in the field of dramaturgy. We
acknowledge that Dr. Shteir’s credentials, both her education and
experience in dramaturgy, are impressive. In her declaration,
she provides interesting history and psychosocial analysis in
fields as diverse as the origins of the tuxedo, the significance
of striptease, the women’s liberation movement, the symbolic
impact of costumes and uniforms, and other fields.
Serial No. 78666598
24
Unfortunately, we find that her expertise and analysis ultimately
have little probative value in relation to the question at hand,
that is, whether the Cuffs & Collar Mark was inherently
distinctive at the time applicant began to use it.
In her declaration Dr. Shteir indicates that she was
instructed in relevant trademark subjects. However, the fact
that she is not familiar with the field is evident. At one point
in the declaration, Dr. Shteir states, “However, there is
another independent reason that I believe unequivocally
supports the finding that the mark [applicant’s Cuffs &
Collar Mark] is inherently descriptive.” Shteir Dec. at 22
(emphasis added). The reference to “descriptive” is, most
likely, an inadvertent slip; it is, nonetheless, indicative
that Dr. Shteir is operating in an unfamiliar field, not
one in which she is an expert. We note further that Dr.
Shteir did not conduct any empirical research, difficult as
that may be at this point in time, to determine how
relevant consumers perceived the Cuffs & Collar Mark when
applicant began to use the mark.
The ultimate point of Dr. Shteir’s declaration, based
on applicant’s proposed test and applicant’s theory of the
case, is that the Cuffs & Collar Mark is an intrinsic
symbol for the Chippendales dancer who, in turn, is an
iconic larger than life character. Shteir Dec. at 17. As
Serial No. 78666598
25
such, Dr. Shteir opines that the Cuffs & Collar Mark is
inherently distinctive.
In her analysis Dr. Shteir points to Mary Poppins as
the quintessential “iconic character” and to her umbrella
as an “intrinsic symbol” of that character. Dr. Shteir
states, “Thus, just as the attributes of Mary Poppins are
transferred to her umbrella, so, too, the fantasy
attributes of the Chippendales dancer were transferred to
the Cuffs and Collar outfit worn by the Chippendales
dancers. Without the Cuffs and Collar, the dancer was just
another guy wearing a G-string. With the Cuffs and Collar
he became the perfect embodiment of the women’s fantasy.”
Id. at 26.
We fail to see how the comparison of Mary Poppins with
the Chippendales supports applicant’s position. Dr. Shteir
does not identify the service as to which the iconic Mary
Poppins umbrella would immediately serve as a source
indicator. Is the umbrella, as used in Mary Poppins, a
service mark for any services? Is it in any way comparable
to the way in which applicant uses its Cuffs & Collar Mark
in connection with applicant’s exotic dancers who render
adult entertainment services on an ongoing basis? The fact
that the cuffs-and-collar uniform may be “the perfect
embodiment of the women’s fantasy” does not lead to the
Serial No. 78666598
26
conclusion that it is an inherently distinctive service
mark.
Even if we set aside the question of the validity of
this comparison, we do not find this analysis to be in any
way probative of the issue, that is, whether the Cuffs &
Collar Mark is inherently distinctive.
On a superficial level the analysis elevates the adult
entertainment service involved here to a status which is
not congruent with reality. As the author Dr. Shteir
references states, “The appearance of naked or near-naked
men (whether for women or men) cannot, therefore, be
understood as offering oppositional or taboo-breaking
identities for the viewer as their display is always at the
service of capitalism and its profiteers (Galloway, 1990).”
Id., Exh. 2 at 76. On an even more elemental level, in
commenting on the Chippendales dancers Dr. Shteir herself
states, “A major part of this fantasy was that these men
were the perfect ‘hunks’ whose only interest was to please
women and not themselves.” Id. at 21. And finally, again
the author Dr. Shteir references captures the essence of
the Chippendale “phenomenon” by referring to the an “…
acceptable female desire for male bodies.” Id., Exh. 2 at
71.
Serial No. 78666598
27
As we stated above, the point of the Chippendales’
performance is to provide a provocative, revealing, adult-
entertainment experience for the audience focused on the
minimal attire of the performers, or more accurately the
maximum exposure of the performers’ bodies. We find
nothing in Dr. Shteir’s analysis or the other evidence
which in any way alters the simple fact that the focus of
the service at its inception was the bodies of the
performers, not the particulars of their minimal attire.
Furthermore, applicant’s other evidence, including the
declarations of its performers, its competitors and its
counsel, merely serve to support the conclusion that the
Cuffs & Collar Mark has acquired distinctiveness, not that
it was ever inherently distinctive.
Also, Dr. Shteir states, “However, in reviewing the
history of the Chippendales, I remember that the Cuffs and
Collar trade dress was not limited to the dancers
themselves but also to the waiters serving the female
patrons dinner before the show began.” Shteir Dec. at 21
(footnote omitted). There is insufficient evidence in the
record regarding the timing and other circumstances
regarding this or other similar uses of the cuffs and
collar to consider what impact any such use may have had on
the relevant public. Even the affidavits from applicant’s
Serial No. 78666598
28
own vice presidents, Mr. Denberg and Mr. Goldman, make no
mention of such uses.
Accordingly, we conclude that the Cuffs & Collar Mark
is not inherently distinctive. However, the fact that
applicant already owns an incontestable registration for
the Cuffs & Collar Mark should serve as no small
consolation in spite of our decision here.
Decision: We affirm the refusal to register the mark
under Trademark Act Sections 1, 2 and 45.

- o O o -
Opinion by Bucher, Administrative Trademark Judge,
dissenting:
"How many hunky seraphim can dance on the point of a needle?"
-- AN ANONYMOUS FOURTEENTH-CENTURY SOPHIST

It is hard to argue with the compelling logic of the
majority’s final point: what purpose is served by
prosecuting this application in light of applicant’s ‘613
registration? In reviewing the facts of this case, it is
also hard to ignore the clear inequality in resources
between the Trademark Examining Attorney and applicant in
this case, and it is epitomized by the work product of Dr.
Serial No. 78666598
29
Shteir.10 As the Trademark Examining Attorney who
prosecuted the DURANGO case [In re Loew's Theatres, Inc.,
769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985)] and clearly
benefited from the Court’s understanding of what can
reasonably be expected of the United States Patent and
Trademark Office (Id. at 868), I am not unsympathetic to
the challenges placed upon the Trademark Examining Attorney
in a case such as this one.11 The burden was enhanced by
the fact that Chippendales USA, Inc. now contends that this
trade dress functioned as a service mark upon its
introduction in 1979. While applicant has been pursuing
this particular registration for almost a decade now,
still it delayed for decades seeking this federal
registration. Trademark Examining Attorneys laboring under
demanding production requirements cannot afford to be time
travelers, and few have advanced degrees in dramaturgy and
theatre arts.

10 Dr. Rachel Shteir, Doctor of Fine Arts, and Director of the
Dramaturgy/Criticism Program at the Theatre School at DePaul
University.

11 If there is a distinction with Loew’s Theatres (other than
an access to information today that was unimaginable in 1982), it
is that there applicant claimed that the Office should conduct a
marketing survey in order to support a prima facie case. Here,
even if one assumes that the Trademark Examining Attorney has
made a prima facie case, applicant has responded with the
impressive work product of Dr. Shteir – a level of effort not
contemplated by the applicant in Loews Theatres.

Serial No. 78666598
30
Nonetheless, despite the Office’s decided disadvantages,
and the seemingly inconsequential nature of our determination
upon applicant’s assets or brand identity,12 based upon this
entire record, I find that the “Cuffs & Collar Mark” would
appear to be an original creation and an immediately
recognizable symbol belonging to applicant alone, and hence,
inherently distinctive.
The expert
While the majority minimizes the value of Dr. Shteir’s
work product in reaching its conclusions, I find that Dr.
Shteir is an expert in the role and function of
costumes/uniforms in striptease in the U.S., and credit her
testimony as to the reactions of audience members to
particular outfits worn by performers. Yes, her lengthy
declaration of October 19, 2006, having sixty-six numbered
paragraphs, is suffused with Twentieth-Century history,
gender politics and cultural theories. But let us
remember, she was not presented as a trademark law expert.
I accept Dr. Shteir’s conclusion that the expectations
of the members of the all-female audience to whom the show

12 Query, in which federal Circuit Court of Appeals will federal
judges admit to finding a registration on the Principal Register
without benefit of Section 2(f) to be stronger than the same one
marked with § 2(f)?

Serial No. 78666598
31
was originally presented are critical to our decision
herein. Dr. Shteir poses the question as follows:
Would a woman attending her first Chippendales
performance in the late 1970’s have understood
from that show alone that the “Cuffs and collar”
were a designation of Chippendales or would she
have seen it as just some generic dress for male
strippers?

To put this in context, applicant reminds us that the
feminist movement and sexual revolution were in full swing
in 1979. Male exotic dancing13 in U.S. theatres packed with
women was quite new. On the first of their “women’s nights
out,” these women would have perceived applicant’s “out-of-
place” skeleton of a tuxedo as a new category that did not
fit neatly into their existing schema. Accordingly, they
would be forced to create a new one.
Dr. Shteir points out that upon its first use by
applicant in 1979, the cuffs and collar design likely
symbolized promiscuous, liberated, sexual woman drawn to
class, prestige and wealth:
Chippendales has taken two everyday articles that
virtually always appear connected to a garment
and, by featuring them alone, has given them new
meaning. The separation of a cuffs and collar

13 The majority is correct in noting that the recitation of
services in the application uses the term “exotic dancing for
women,” and hence does not limit the services to those performed
by male dancers (See footnote 3). Nonetheless, based on this
large record, the dissenting judge will assume without further
proof that substantially all Chippendales dancers have a Y
chromosome.

Serial No. 78666598
32
from a shirt invokes the image of a tuxedo but
now the space where the shirt used to be has new
meaning: sexuality, fantasy, and fulfillment.
One reason that the connection between the Cuffs
and Collar trade dress and Chippendales is so
strong is that it is more than merely acquired
recognition but is instead reflective of the many
ways that the symbol perfectly matches the brand.

Dr. Shteir’s declaration, ¶64.

Applicant explains that this “skeleton of a tuxedo,”
allowed audience members
… to simultaneously hearken back to the fantasy
of the wealthy man combined with the fantasy of
the man whose true wealth is his ability to
please. This, too, is consistent with the iconic
role that the Chippendales dancer plays over the
course of the evening. He is larger than life
and can represent whatever each individual in the
audience desires him to represent.

How anyone could call a symbol laden with such
rich emotional imagery merely a refinement of an
existing ornamentation for a particular class of
services is difficult to fathom. Rarely has any
symbol so perfectly captured the very essence of
a brand. And when a symbol captures so much so
quickly, it is not functioning as mere
ornamentation but as a designation of source.

Applicant’s appeal brief at 17.

Based on all of this history, applicant argues that
“the very concept of formal attire for exotic dancing was
so unexpected and revolutionary that the Cuffs and Collars
were the cornerstone of the company’s promotion and a key
to its success …”
Serial No. 78666598
33
The Law
I concur with the majority that our primary reviewing
Court has provided us with adequate direction on deciding
issues of the registrability of trade dress. On the other
hand, should the trademark bar need a new test for
determining inherent distinctiveness for uniforms, that
would be the correct forum in which applicant might propose
its new, specialized test.
Professor McCarthy has observed that “[i]n reality,
all three [Seabrook Foods] questions14 are merely different
ways to ask whether the design, shape or combination of
elements is so unique, unusual or unexpected in this market
that one can assume without proof that it will
automatically be perceived by customers as an indicia of
origin -- a trademark.” J.T. McCarthy, McCarthy on
Trademarks and Unfair Competition, Section 8.02 [4] (3d ed.
1993). “Thus the focus of the inquiry is whether or not
the trade dress is of such a design that a buyer will
immediately rely on it to differentiate the product
[services] from those of competing manufacturers [service
providers]; if so, it is inherently distinctive. Tone

14 Given the manner in which the product packaging in Seabrook
differs from the involved design, the fourth Seabrook factor is
not relevant to this case or similar trade dress questions that
frequently arise in contexts where there are no literal elements
present.

Serial No. 78666598
34
Brothers Inc. v. Sysco Corp., 28 F.3d 1192, 31 USPQ2d 1321,
1331 (Fed. Cir. 1994), citing Paddington Corp. v. Attiki
Importers & Distributors, Inc., 996 F.2d 577, 582-84,
27 USPQ2d 1189, 1192-93 (2d Cir. 1993).
My Analysis
In order to streamline my opinion, I will presume
familiarity with the record, and merely highlight in a
bulleted format those areas where I find myself in
disagreement with the position of the Trademark Examining
Attorney and/or salient points made by the majority:
• Applicant’s expert in dramaturgy and theatre
arts, Dr. Rachel Shteir, who has conducted extensive
research on the history of striptease in the United
States, declared that she is unaware of any prior
uses by male strippers of cuffs and a collar
separated from a shirt or other garment. Despite a
plethora of evidence from the Internet, including
detailed reviews of stripping during the era of
burlesque shows (an area where Dr. Shteir’s expertise
is probably unequaled), the Trademark Examining
Attorney has not pointed to this form of trade dress –
where a performer having a skeletal tuxedo is both
dressed up and undressed – for adult entertainment
services.
• As to whether this was a common form of trade
dress in the field of exotic dancing in 1979, the
Trademark Examining Attorney has produced no
evidence that something like the cuffs and collar
Serial No. 78666598
35
design separated from a shirt, blouse or other
garment, existed in the field, prior to such use by
the Chippendales dancers, whether used by male or
female adult entertainers.
• The Trademark Examining Attorney made no
reference to the “Sexy Bunny Costume” located by the
majority. Frankly, it is difficult to conclude
anything substantive from this largely indecipherable
image. The possibility that applicant “borrowed” the
cuffs and collar design from the Playboy bunny was
raised sua sponte by this Board, not the Trademark
Examining Attorney. The passing suggestion of one
writer (also a nugget buried in a very large record
and never highlighted by applicant or the Trademark
Examining Attorney) that “the bunny suit … inspired”
the Chippendales cuffs and collar design seems a
fairly slender reed on which to hang, as does the
majority, a conclusion that in 1979, the cuffs and
collar trade dress was neither unique nor unusual in
the field of exotic dancing for women. Furthermore,
the declaration of Dr. Shteir sets out in detail the
significant differences between applicant’s
entertainment services and whatever may have
transpired at a Playboy Club.
• The Trademark Examining Attorney points out that
exotic dancers often start such a show wearing some
kind of “multi-layered” outfits – a stripper doctor
with a stethoscope, construction worker with a utility
belt, etc. Applicant clarifies that strippers may
well begin their routine with some kind of fantasy
outfit, often sporting non-trademark symbols for the
easily-recognizable occupations of real life
Serial No. 78666598
36
characters in the story. I agree with applicant that
these occupational symbols contrast with the iconic
choice of cuffs and collar expressly designed to be
part and parcel of applicant’s identity. The mere
fact that the cuffs and collar, like the utility belt,
remain on the performer after the shirt is discarded,
does not compel a finding that applicant’s cuffs and
collar design is pedestrian in the field of male
exotic dancing. To the contrary, accessories like a
utility belt, G-string or ten-gallon hat might well
serve a useful purpose for male exotic dancers (who we
are told are seldom totally nude when dancing on
stage) not served so easily by the cuffs and collar.
• As does the majority, I appreciate that there is
sexual provocation involved in strippers’ ever-more-
minimal attire exposing ever-more of the performer’s
body. However, like applicant, I question the
relevance of the Trademark Examining Attorney’s
evidence of female strippers (well before the late-
1970’s) performing striptease acts with accessories
such as pasties, tassels, boas, evening gowns or
chorus pants.
• The Trademark Examining Attorney states that “all
the examining attorney needs to show is that performers
whether male or female, did dress in some type of stylized,
if not formal attire,” presumably at the time the exotic
dancer first takes the stage.
I find this argument much too simplistic to
satisfy the first prong of the Seabrook Foods (“common
basic shape or design”) test.
As discussed by the majority, certainly non-
traditional marks, including distinctive costume
Serial No. 78666598
37
designs, can serve the dual purpose of identifying
source and serving as an integral and necessary
component of the services with which they are used.
Arguably combinations of color, design, and
ornamentation of clothing, including the cuffs and
collar worn by Chippendales dancers, are analogous to
the garb of iconic characters, such as the blue tights
and red cape of Superman, that taken together
represents the power to leap tall buildings in a
single bound. Cf. In re DC Comics, Inc., 689 F.2d
1042, 215 USPQ 394 (CCPA 1982).
• In their quest for similar “provocative
costumes,” the majority cites to several male-
stripper costumes currently available on the
Internet. I would argue that Halloween costumes for
personal use do not support the position of the
Trademark Examining Attorney. In fact, one of the
more careless of these vendors of male-stripper
costumes actually mentions the allure of the
Chippendales dancer.15 While possibly intended for

15 http://www.halloweenmart.com (“Male stripper costumes are
also a blast to put together, but the best look is usually
modeled after the traditional Chippendale (sic) boys. Our
stripper set is just what all you boys need – it comes with a
black bow-tied collar and traditional cuffs. Throw on a pair of
shorts or pants, and voila, your costume is complete.”)

Serial No. 78666598
38
• use at masquerade balls, Halloween parties or
with amateur theater, these sites are clearly not a
source of uniforms for professional exotic male
dancers. 16
• In the context of “mere refinement of an existing
form of trade dress,” the Trademark Examining Attorney
analogizes the facts herein to those in a Board case
on trade dress packaging for Christmas merchandise.17
The majority analogizes to the facts of In re Hudson
News Co., 39 USPQ2d 1915 (TTAB 1996). I find neither
of these cases truly analogous to the facts of this
case. The Board in Hudson News found the “cool
bluish, clean and salubrious … shopping environment”
to be “quite pedestrian,” and not striking or unusual.
Id. at 1923. The Court of Appeals for the Federal
Circuit issued a per curium decision immediately.
114 F.3d at 1207.
• The applicant in Hudson News gave neither
evidence nor reasons why prospective customers would
find its trade dress “striking.” 39 USPQ2d at 1924.
By contrast, the record herein is replete with
unsolicited conclusions – contained in articles

16 http://www.costumecraze.com/BTRAD41.html and
http://www.thinktanktoys.com/Adult-Male-Stripper-Kit-
(BTRAD41).html and http://www.costumzee.com/tag/male+stripper/

17 “ … [T]he evidence shows that it is not uncommon for
Christmas merchandise to be packaged in a manner which
resembles wrapped Christmas presents. Thus, applicant’s
designs, which consist of stars and the colors red, green
and gold indeed resemble wrapped Christmas presents, are a
mere refinement of a form of ornamentation for Christmas
merchandise.”
In re J. Kinderman & Sons Inc., 46 USPQ2d 1255 (TTAB 1998);
Trademark Examining Attorney’s brief at 13.

Serial No. 78666598
39
written in the earliest days of the Chippendales
dancers by journalists without any expertise in
intellectual property law – that the cuffs and collar
serve as applicant’s “trademark.” This usage is
corroborated by declarations from non-attorneys
stating, for example, that the Cuffs & Collar Mark are
“ … highly recognizable symbols of the Chippendales
brand.”18
• As to the Supreme Court’s position in Wal-Mart
that in certain circumstances, consumers “almost
automatically” recognize a certain symbol as an indication
of source, I find that principle is entirely consistent
with applicant’s position on the facts herein, while
serving as an indictment of the mundane trade dress in
J. Kinderman and Hudson News.
• The women of 1979, seeing (and touching) this
skeleton of a tuxedo would be confronted at close
range with a somewhat different and therefore
memorable “schema” (Dr. Shteir’s word). Under such
circumstances, I find it convincing that this
symbology could well “immediately … signal a brand or
a product ‘source.’” Qualitex Co. v. Jacobson
Products Co., 514 U.S. 159, 115 S.Ct 1300, 34 USPQ2d
1161, 1162 (1995).
• Also, from the very first visit to a Chippendales
dancers performance, the members of the female
audience will notice the same “out-of-place” cuffs and
collar on waiters, reprinted as images in the program,
emblazoned in other indicia around the performance

18 Paragraph 4 of the second Denberg Dec. attached to Response
to January 29, 2006 Office Action.
Serial No. 78666598
40
venue, and used online.19 Contra Hudson News,
39 USPQ2d at 1924.
• The alleged similarities of applicant’s cuffs and
collar design to the full, formal dress of wait staff
generally does not strengthen the Trademark Examining
Attorney’s case. The first time a group of women
heads out for an evening of exotic male dancing and
notices that their waiters are wearing cuffs and
collar but no shirt, they would hardly mistake this
“dress” for that of the waiter or maître d’ at their
usual dining venues.
• The issue before us is inherent distinctiveness,
and it is clear that very early on, with applicant’s
sudden commercial success, those trying to compete in
the field of male exotic dancing for women began

19 “ … [I]n reviewing the history of Chippendales I
remembered that the Cuffs and Collar trade dress was not
limited to the dancers themselves but also to the waiters
serving the female patrons dinner before the show began…”
Dr. Shteir’s declaration, ¶45.

Also see “Chippendales: The Story So Far,” by Nicky Pope (1996)
at 12 (describing a typical evening at Chippendales in the pre-
1983 time frame (emphasis supplied), noting that the evening
began with “male maitre d’s and waiters all dressed in tight
black trousers with chests bare … but they still wore collars and
cuffs and bow ties.”).

“The Chippendales, ‘Kings of the G-Strings,’ made their
first appearance at a Los Angeles nightclub in 1978:
handsome young men served drinks to women customers in the
collars and cuffs which were to become their trademark …”
“Shiny Chests and Heaving G-Strings: A Night Out with the
Chippendales,” p. 70.

http://www.chippendales.com/

Serial No. 78666598
41
copying this distinctive imagery.20 Applicant suggests
that this history supports the conclusion that its
combination is “unmistakable,” “clearly perceived,”
“highly unusual,” or “extraordinary,” and it is so
distinct that applicant has found ways easily to
promote this “highly unusual” feature. Id.
• In weighing all the evidence in this record,
especially Dr. Shteir’s declaration, I find that the
Office has not met its burden of showing that the
“Cuffs & Collar Mark” is a mere refinement of an
existing form of ornamentation. Certainly the fact
that other exotic male dancers may begin a dance for
women with costumes where identifiable vestiges of an
occupation remain after the striptease simply has no
relevance to the place applicant’s “Cuffs & Collar Mark”
deserves within the field of exotic dancing for women.
Accordingly, I would reverse the Office’s refusal to
register this trade dress design.

20 Declaration of John Rivera, ¶¶ 4 – 8, October 24, 2001;
declaration of Kevin Cornell, ¶¶ 4 – 10, October 24, 2001;
declaration of Gary Goldman, ¶¶ 5 – 12, October 25, 2001;
Declaration of Kevin Denberg, ¶¶ 4 – 10, October 26, 2001;
declaration of Joseph Caulley, ¶¶ 5 – 8, August 2002; declaration
of Tony Johnson, ¶¶ 3 – 8, August 2002; Declaration of Kevin
Denberg, ¶¶ 2 – 7, August 20, 2002.