TBL Licensing LLC

Trademark Trial and Appeal Board

Apr 2, 2021

86634819 (T.T.A.B. Apr. 2, 2021)

This Opinion is Not a
Precedent of the TTAB

Oral Hearing: December 16, 2020 Mailed: April 2, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re TBL Licensing LLC
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Serial No. 86634819
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Sarah C. Hsia, Jason M. Sneed, and Megan E. Sneed of Sneed PLLC,
for TBL Licensing LLC.
Ingrid C. Eulin, Trademark Examining Attorney, Law Office 111,
Chris Doninger, Managing Attorney.
_____

Before Taylor, Coggins and Dunn,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
TBL Licensing LLC (“Applicant”) seeks registration on the Principal Register with
a claim of acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C.
§ 1052(f), of the asserted mark, as displayed below, for goods identified as “footwear,
namely, lace-up boots” in International Class 25.1

1 Application Serial No. 86634819 was filed on May 19, 2015, based upon Applicant’s
allegation of use in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a),
claiming December 1, 1988 as both the date of first use anywhere and in commerce.
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The mark is described in the application as follows:
The mark consists of a three-dimensional configuration of
a lace-up boot having an overall shape and silhouette as
depicted in the drawings, with a visibly bulbous toe box and
the following individual features: (1) the external
appearance of a tube-shaped ankle collar on the outside
surface of the product running from one eyelet panel to the
other eyelet panel around the sides and rear of the boot and
protruding over the upper side and rear panels of the boot
(material on the inside of the ankle collar not being
claimed); (2) outsoles having two color tones divided
horizontally and extending around the circumference of the
boot, and visibly showing inverted tooth shaped cuts on
each side of the heel of the outsole and around the sides
and front of the forward portion of the outsole; (3) an
hourglass-shaped rear heel panel, defined by four vertical
stitching lines from the top of the outsole to the rear collar;
(4) quad-stitching forming an inverted “U” shape around
the vamp line in front of the boot at the bottom of the
tongue and curving around to the left and right sides and
ending at the cinched portion of the hourglass stitching of
the rear heel panel; and (5) eyelets shaped hexagonally on
the exterior-facing outside surface. The double row
stitching around the rear and side ankle collar, the single
stitching around the upper two eyelets on each side, the
single stitching along the upper perimeter of the shaft in
front of the eyelets and the boot tongue, the appearance of
the eyelets on the boot interior, the top of the ankle collar,
the bottom, outer most surface of the outsole, and the
uppermost surface of the outsole connecting to the boot
around the perimeter, all of which are depicted in broken
or dotted lines, are not being claimed as part of the mark
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and serve only to show the position or placement of the
mark.
Color is not claimed as a feature of the mark.
The specimen of record consists of the following photographs of Applicant’s
claimed mark:

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The Examining Attorney has refused registration on the following grounds:
(1) That Applicant’s proposed mark is a product
configuration comprising non-distinctive features under
Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§ 1051-52,
1127, for which Applicant’s evidence of acquired
distinctiveness under Section 2(f), 15 U.S.C. § 1052(f) is
insufficient;
(2) that the proposed mark comprises functional trade
dress under Trademark Act Section 2(e)(5), 15 U.S.C.
§ 1052(e)(5); and
(3) requirements that Applicant’s drawing must be
amended to depict only capable elements and the mark
description must be amended to reflect that change.
When the refusals were made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. Both Applicant and the Examining
Attorney filed briefs, and an oral hearing was held. As discussed below, we affirm the
refusal under §§ 1, 2, and 45, and do not reach the functionality refusal under Section
2(e)(5) of the Act or the amended drawing and description requirements.
Whether Applicant’s Proposed Mark is a Non-Distinctive
Product Design Which Has Acquired Distinctiveness
I. Analysis of Refusal
A. Applicable Law
Applicant’s mark is comprised of the three-dimensional trade dress2 or product
design of a lace-up boot “with a visibly bulbous toe box” and the individual features

2 Applicant characterizes its asserted mark as “trade dress.” However, the terms “trade dress”
and “product design” have been used interchangeably for product features to which
trademark rights are claimed. See e.g., Converse, Inc. v. Int’l Trade Comm’n, 907 F.3d 1361,
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noted above. A product design “is not inherently distinctive.” Wal-Mart Stores Inc. v.
Samara Bros. Inc., 529 U.S. 205, 54 USPQ2d 1065, 1068 (2000); see also In re OEP
Enters., Inc., 2019 USPQ2d 309323, *16 (TTAB 2019) (quoting Kohler Co. v. Honda
Giken Kogyo K.K., 125 USPQ2d 1468, 1503-04 (TTAB 2017) (“product designs can
never be inherently distinctive and will always require evidence of acquired
distinctiveness or secondary meaning to be registrable as marks.”) (citations and
internal quotation marks omitted)). However, “a product design that provides no real
utilitarian advantages to the user, but is one of many equally feasible, efficient and
competitive designs, may be registrable upon a showing of acquired distinctiveness
pursuant to Section 2(f) of the Trademark Act.” In re SnoWizard, 129 USPQ2d at
1004 (citing In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395, 1398 (Fed. Cir. 2006)).
We therefore must determine whether Applicant has made a prima facie showing
that the relevant consumers perceive the design of a lace-up boot with the above-
listed combined features as a trademark. Applicant bears the burden of proving that
its product design has acquired distinctiveness. Yamaha Int’l Corp. v. Hoshino Gakki
Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988); In re Hollywood
Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954) (“There is no doubt that

128 USPQ2d 1538 (Fed. Cir. 2018) (a product’s design is considered distinctive, and therefore
protectable as “trade dress,” only upon a showing of secondary meaning). We note further
that “while ‘trade dress’ historically has been more often used to refer only to the packaging
and labeling of a product, the breadth of the term has been expanded to include the shape
and design of a product itself.” In re SnoWizard, Inc. 129 USPQ2d 1001, 1003 n.5 (TTAB
2018) (citing Elmer v. ICC Fabricating, 67 F.3d 1571, 36 USPQ2d 1417, 1421-22 (Fed. Cir.
1995) (trade dress refers to product packaging and the design of the product itself). We use
the terms “trade dress” and “product design,” interchangeably, to refer to Applicant’s
proposed mark.
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Congress intended that the burden of proof [under Section 2(f)] should rest upon the
applicant ....”). That is, Applicant must show that the product design sought to be
registered is perceived by relevant consumers not just as the product (or features of
the product), but as identifying the producer or source of the product. Wal-Mart, 54
USPQ2d at 1068 (acquired distinctiveness exists “when, in the minds of the public,
the primary significance of a [mark] is to identify the source of the product rather
than the product itself”) (citation and internal quotation marks omitted).
The kind and amount of evidence necessary to establish that a mark has acquired
distinctiveness in relation to goods depends on the nature of the mark and the
circumstances surrounding the use of the mark in each case. Yamaha Int’l Corp., 6
USPQ2d at 1008; Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34,
39 (CCPA 1970); In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381, 383 (CCPA 1960).
Applicants face a heavy burden to establish distinctiveness and register trade dress.
Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549
(TTAB 2009); see also Duraco Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 1431,
1453, 32 USPQ2d 1724, 1742 (3d Cir. 1994) ( “secondary meaning in a product
configuration case will generally not be easy to establish”).
Further, in cases of trade dress or product design, the evidence provided to
establish acquired distinctiveness must relate to the promotion and recognition of the
specific configuration embodied in the proposed mark and not to the goods in general.
See Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.11 (1982)
(“To establish secondary meaning, a manufacturer must show that, in the minds of
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the public, the primary significance of a product feature or term is to identify the
source of the product rather than the product itself.”); see also, e.g., In re Bongrain
Int’l Corp., 894 F.2d 1316, 1318, 13 USPQ2d 1727, 1729 (Fed. Cir. 1990) (sales success
may not suffice to prove that a mark has acquired distinctiveness where other marks
were featured along with it or where sales growth could be attributed to the product’s
popularity); In re McIlhenny Co., 278 F.2d 953, 956-57, 126 USPQ 138, 140-41 (CCPA
1960) (promotion of a bottle design bearing other trademarks insufficient under § 2(f)
to show that the public views the bottle design alone as a trademark). Cf. In re Chem.
Dynamics, Inc., 839 F.2d 1569, 1571, 5 USPQ2d 1828, 1830 (Fed. Cir. 1988) (5 years
use of composite mark does not speak to the issue of whether a component is viewed
by itself as a mark); In re Soccer Sport Supply Co., 507 F.2d 1400, 1403, 184 USPQ
345, 348 (CCPA 1975) (advertising of a design along with word marks lacked the
“nexus” that would tie together use of the design and the public’s perception of the
design as an indicator of source).
B. The Examining Attorney’s Arguments and Evidence
The Examining Attorney maintains that Applicant’s proposed mark consists of a
nondistinctive product design or contains nondistinctive features of a product design
for which Applicant’s claim and evidence of acquired distinctiveness is insufficient.
More specifically, the Examining Attorney argues that Applicant’s evidence is
insufficient because “it fails to show that consumers have been conditioned to perceive
the particular combinations of design features claimed here as source-indicating
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trademarks.”3 With regard to Applicant’s claim of long, substantially exclusive and
continuous use of its boot design, the Examining Attorney argues that during the
period of claimed substantially exclusive use, there were multiple other
manufacturers with similar boot designs. To support her position, the Examining
Attorney made of record web pages showing third-party work-style boots from, e.g.,
Caterpillar, Coleman, Forever 21, Report, Shoe Republic LA, Soda Women, Nature
Breeze, Rocket Dog, Skechers, Phat Farm, Dexter and Levi’s,4 that are similar in
design to the trade dress Applicant seeks to register. More specifically, the record
shows lace-up boots from multiple sources with bulbous toe boxes, ankle collars,
outsoles with tooth-shaped-cuts (some with two-toned outsoles), and front-to-back
vamps.5 A representative sample follows:

3 18 TTABVUE 23.
4 October 6, 2016 Office Action; TSDR 9, 15, 22-23, 33-36, 39 and 41; see also May 19, 2017
Office Action; TSDR 54-55, 61-62, 72, 82, 91-92 and 136-140 and June 26, 2017 Office Action;
TSDR 88, 91-92, 97, 103, 105-106, 111, 116 and 271.
Citations to the briefs in the appeal record refer to the TTABVUE docket system. Citations
to the prosecution file refer to the .pdf version of the TSDR system record. In re Consumer
Protection Firm PLLC, 2021 USPQ2d 238, *3 n.3 (TTAB 2021).
5 In most instances, the shape of the eyelets and rear heel panels are not discernable.
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C. Applicant’s Arguments and Evidence
Applicant, in arguing against the refusal, maintains that “the evidence clearly
demonstrates that consumers view Applicant as the source of lace-up boots bearing
Applicant’s Trade Dress,” and also questions the Examining Attorney’s focus on the
absence of “look-for” advertising. Applicant’s brief pp. 20-22.6 Applicant supported its
claim of acquired distinctiveness with the following materials:7
 The declarations of two of Applicant’s employees, Christopher Turk,
Applicant’s Vice President and Secretary,8 and Jeff Thompson, Vice
President, Global Development of Timberland, a division of VFR Outdoor,
LLC, a sister company to Applicant9; and Todd Kirssin, the General
Merchandise Manager at KTLR Inc. and Rafi Eskenazi, the head buyer for
Robert Wayne Footwear, two retail footwear buyers of Applicant’s lace-up
boots;10 and
 Copies of unsolicited newspaper and magazine articles discussing the
Timberland brand and boots, some featuring celebrities and others wearing

6 16 TTABVUE 22-24.
7 Many of Applicant’s submissions were made of record multiple times. These duplicative
submissions were unnecessary and confuse the record. For clarity, in this decision we
generally use the citations referenced by Applicant in its brief.

8 Applicant’s March 30, 2016 Response, Exh. F; TSDR 71-75.
9 Id. at Exh. M; TSDR 170-174.
10 Applicant’s December 21, 2017 Response, Exhs. S and T; TSDR 45-53.
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Timberland boots,11 blurbs and images of celebrities and others wearing
Timberland boots, and advertising and promotional materials for
Applicant’s Timberland boots.12
In assessing whether Applicant has met its heavy burden of establishing acquired
distinctiveness, we consider any evidence bearing on the: “(1) association of the
trade[mark] with a particular source by actual purchasers (typically measured by
customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner
of advertising; (4) amount of sales and number of customers; (5) intentional copying;
and (6) unsolicited media coverage of the product embodying the mark.” (“Converse
factors”) In re SnoWizard, Inc., 129 USPQ2d at 1005 (TTAB 2018) (quoting Converse,
Inc. v. Int’l Trade Comm’n, 907 F.3d 1361, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018)).
We discuss below the Converse factors that are relevant to this case for which we have
evidence.
D. Analysis of Evidence and Arguments Relating to the Relevant Converse
Factors
1. Association of the Trademark with a Particular Source by Actual
Purchasers13
Direct consumer testimony can be relevant to establish acquired distinctiveness.
Applicant has made of record the declarations of Todd Kirssin and Rafi Eskenazi,

11 Going forward in this decision, we use the wording “Timberland boots,” alone, to also refer
to Applicant’s proposed trade dress.
12 See, e.g., Applicant’s Mar. 30, 2016 Response, Exhs. A, B, D, E, G and J2; TSDR 42-48, 51-
69, 76-104 and 144, and Applicant’s Dec. 21, 2017 Response, Exhs. U and W; TSDR 54-73
and 88-94.
13 This factor is “typically measured by customer surveys,” Converse, 128 USPQ2d at 1546,
although surveys are not required. Applicant did not provide a survey, but has made of record
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retailers of its Timberland boots.14 Mr. Kirssin attests that “the features claimed by
[Applicant] in connection with its Iconic Timberland Boot trade dress are all very
distinctive features of the Iconic Timberland Boot and make the boot instantly
recognizable by our customers”; and that “the shape and look of the Iconic Timberland
Boot have become exclusively associated with Timberland” and that his customers
“immediately associate those boots with Timberland based on the shape and look.”
Kirrsin decl. ¶¶ 4 and 6.15 Mr. Eskenazi similarly attests that “the features claimed
by [Applicant] in connection with its Iconic Timberland Boot trade dress are all very
distinctive features of the Iconic Timberland Boot and make the boot immediately
identifiable to our customers”; that “customers can recognize [the Timberland Boot]
from across the store, even if it is offered in different colors than the traditional ‘wheat
yellow’ color”; and that “[t]he Iconic Timberland Boot have [sic] become exclusively
associated with Timberland … based on the shape and look.” Eskenazi decl. ¶¶ 4, 8
and 10.16 Both declarations include the following images of the Timberland boot:

the declarations of two of its “dealers” and captioned images and blurbs showing that its boot
trade dress is worn by “countless celebrities.”
14 In its appeal brief, Applicant refers to the boots which incorporate the product features
sought to be registered in the subject application as “Timberland” boots. See, e.g., 16
TTABVUE 4.
15 Applicant’s December 17, 2017 Response; TSDR 47.
16 Applicant’s December 17, 2017 Response; TSDR 53.
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For multiple reasons, we find this declaration testimony has little probative value
on the issue of acquired distinctiveness of the proposed mark. As noted by the
Examining Attorney, the declarations reference Applicant’s lace-up boot and contain
the images of the boot shown above, one of which includes the embossed Timberland
tree logo, matter which does not appear in the drawing of Applicant’s proposed mark.
Moreover, the averment that consumers recognize “the features claimed by”
Applicant not only fails to indicate specific features that consumers recognize, but
baselessly links consumer recognition to the legal claims in the application. While
these two individual retailers may be consumers of lace-up boots, they are not the
average, or end, consumer of Applicant’s lace-up boot. “It is well settled that the
assertions of retailers, who know full well from whom they are buying, that they
themselves recognize a particular designation as a trademark, or that they believe
that their customers consider it to be a mark, cannot serve to establish that members
of the purchasing public, who come to the marketplace without such specialized
knowledge, would in fact recognize the designation as an indication of origin.” In re
Semel, 189 USPQ 285, 288 (TTAB 1975). See also In re Edward Ski Prods. Inc., 49
UPSQ2d 2001 (TTAB 1999).
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Applicant’s “multiple examples of unsolicited consumer association of Applicant’s
Trade Dress with Applicant (some without any visible logo design)”17 are comprised
of excerpts, including images, primarily from a variety of style publications or style
sections of various publications (including both print and online editions), of
celebrities, including Beyoncé’s daughter Blue Ivy, Jay-Z, Rihanna, Justin Bieber and
Kanye West wearing Timberland boots. Many of the images include links to purchase
Applicant’s boots, and all identify the boots worn by the celebrities as being
Timberland boots. This evidence may demonstrate the popularity of Applicant’s lace-
up boots, but it does not show that the celebrities wearing the Timberland boots
associate Applicant’s claimed trade dress with the source of the boots they are
wearing. Nor do these excerpts and images direct the attention of potential
consumers to identify Applicant’s claimed trade dress as the source of Timberland
boots.
2. Length, Degree, and Exclusivity of Use
Mr. Turk testified that Applicant’s Timberland boot commenced production in
1773 and, since that time, the boot has featured all elements in the claimed trade
dress except for the two-toned outsole, which was introduced in 1988. Turk decl.
¶ 13.18 Thus Applicant has demonstrated continuous use of its applied-for product
trade dress for more than thirty years. “While long use of a mark is a relevant factor

17 In making this arguments cites to the following portions of the record: Mar. 30, 2016
Response, Exh. B; TSDR 46; Exh. G; TSDR 78, 80-81, 83, 86, 89, 93-95, 97, 99, 100, 107 and
Exh. J2, TSDR 144, and Applicant’s December 21, 2017 Response, Exh. U; TSDR 54-73.
18 Applicant’s March 30, 2016 Office Action, Exh. F; TSDR 73.
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to consider in determining whether a mark has acquired distinctiveness, it is not
necessarily conclusive or persuasive.” Stuart Spector Designs v. Fender, 94 USPQ2d
at 1571-72 (TTAB 2009) (citing In re Packaging Specialists, Inc., 221 USPQ 917, 920
(TTAB 1984) (internal citation omitted). On this record, although Applicant has
demonstrated over 30 years continuous use of its applied-for product trade dress, the
record shows Applicant’s use was not substantially exclusive given the numerous
third-party uses. In coming to our finding, we recognize, as Applicant points out, that
most of the third-party boots do not incorporate every feature described in Applicant’s
description of goods. The overall shape and appearance of the third-party work-style
boots nevertheless are quite similar to the boot trade dress Applicant seeks to
register. In fact, the record shows that the overall silhouette of Applicant’s boot is
quite common in the boot industry.
Furthermore, although Applicant argues that a couple of competitors have
“slavishly” copied multiple elements of Applicant’s Trade Dress,” Applicant’s brief, p.
23,19 and Mr. Turk attests that imitations of the Timberland boot are not authorized,
he points only to a single dispute regarding third-party use of a “too similar” boot
design between Applicant and Levi Strauss & Co.20 In view of what we regard as
substantially similar product designs for lace-up boots, the record does not address
any other efforts by Applicant to police its product design. This seeming inaction
coupled with the record evidence of numerous third-party uses of very similar boot

19 16 TTABVUE 25.
20 Applicant’s March 30, 2016 Office Action, Exh. F; TSDR 74.
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designs, further undercuts Applicant’s assertion of substantially exclusive use. In re
Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042, 1049 (TTAB 2013) (“[T]his [length-
of-time] factor is undercut by the lack of exclusivity.”). In view thereof, Applicant fails
to demonstrate the “substantially exclusive” use of the purported mark required by
the statute. 15 U.S.C. § 1052(f); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116,
227 USPQ 417, 424 n.11 (Fed. Cir. 1985); Saint-Gobain Corp. v. 3M Co., 90 USPQ2d
1425, 1434 (TTAB 2007). “When the record shows that purchasers are confronted
with more than one (let alone numerous) independent users of a term or device, an
application for registration under Section 2(f) cannot be successful, for distinctiveness
on which purchasers may rely is lacking under such circumstances.” Levi Strauss &
Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 940-41 (Fed. Cir. 1984); see also
M-5 Steel mfg. Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1098 (“In the case before us,
the record shows that there are at least three companies including opposer that
produce roof vents substantially similar to applicant’s vents. This alone would make
it difficult for applicant to establish acquired distinctiveness.”).
Thus, the probative value of this factor is greatly diminished.
3. Amount and Manner of Advertising and
4. Amount of Sales and Number of Customers

The evidence of record demonstrates that Applicant has sold more than 15 million
pairs of boots over the last 15 years, amounting to at least $1.3 billion in revenue in
the United States alone, Turk decl. ¶ 18, Thompson decl. ¶ 14,21 and that Applicant

21 Id. at 74 and 172.
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has spent $1.5 million on marketing and adverting Applicant’s lace-up boots bearing
the applied-for trade dress from 2011-2016. Turk decl. ¶ 16.22 “However, while sales
volume figures may demonstrate the growing popularity of the products, mere figures
demonstrating successful product sales are not probative of purchaser recognition of
a configuration as an indication of source.” Stuart Spector Designs v. Fender, 94
USPQ2d at 72 (citing Braun Inc. v. Dynamics Corp., 975 F.2d 815, 24 USPQ2d 1121,
1133 (Fed. Cir. 1992) (“[L]arge consumer demand for Braun’s blender does not permit
a finding the public necessarily associated the blender design with Braun.”) and In re
Bongrain 13 USPQ2d at 1729 (Fed. Cir. 1990) (growth in sales may be indicative of
popularity of product itself rather than recognition as denoting origin)). Moreover, it
is established that compelling sales and advertising figures do not always amount to
a finding of acquired distinctiveness. See In re Bos. Beer Co. L.P., 198 F.3d 1370, 53
USPQ2d 1056 (Fed. Cir. 1999) ($85,000,000 in annual sales revenues and $2,000,000
in advertising expenditures found insufficient to establish acquired distinctiveness);
Stuart Spector Designs v. Fender, 94 USPQ2d at 72 (substantial sales and advertising
expenditures found insufficient to establish acquired distinctiveness); Goodyear Tire
& Rubber Co. v. Interco Tire Corp., 49 USPQ2d 1705 (TTAB 1998) ($56,000,000 sales
revenues and 740,000 tires sold insufficient to show acquired distinctiveness of tire
tread design).
As such, although Applicant’s sales figures are impressive, the critical question is
how is the proposed mark being used and ultimately perceived. That is, are

22 Id. at 74.
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consumers exposed to Applicant’s asserted product trade dress in a manner such that
they can attribute an association between the proposed mark and Applicant. Here,
the record shows that Applicant advertises and markets its Timberland boots through
a variety of means, including, direct sales, on its website at www.timberland.com,
through third-party social media outlets such as Facebook, retail stores, such as
Nordstrom, Amazon.com and Footlocker, mailings and other print advertisements,
and through promotions, giveaways and incentive programs. Turk decl. ¶ 17.23 The
record includes numerous examples of these advertisements, a representative
sampling is shown below:

23 Id. at 75.
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…

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Although we have reproduced only a few of the record examples of Applicant’s
advertisements, none highlight the product design features Applicant seeks to
register or promote those collective features as a source indicator. Rather, the record
advertisements consistently show a picture of Applicant’s lace-up boots primarily
with the tree logo visible and with the word mark TIMBERLAND and/or the tree logo
design prominently featured and/or the “original yellow” color touted.24 In essence,
the advertisements generally refer to the styling of the boot, include the tree logo

24 In making this finding, we acknowledge that Applicant advertises its lace-up boot in colors
other than yellow. However, most of the additional colors, save black and red, are advertised
as limited edition collaborations with a particular celebrity or in connection with a particular
cause or event. See e.g., Limited release Susan G. Komen boot in pink for breast cancer
awareness, Applicant’s December 21, 2017 Response at TSDR 75, St. Patrick’s Day shamrock
green color boot promoted by Nordstrom, id. at TSDR 77, Supreme and Timberland’s “The
Supreme Saint” in patriotic colors and motif, id. at TSDR 84, The Ultamiciti x Champs Sports
x Timberland Collection in a variety of colors and animal image toe box, id. at TSDR 85 and
the DJ Khaled x Timberland Secure The Bag Boot in olive green, id. at TSDR 86-87.
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design and often tout the “original yellow” color, characteristics not claimed in
Applicant’s proposed mark. “Advertising that touts a product feature for its desirable
qualities and not primarily as a way to distinguish the producer’s brand is not only
not evidence that the feature has acquired secondary meaning, it directly undermines
such a finding.” Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654, 662, 36 USPQ2d
1065, 1071 (7th Cir. 1995); In re Edwards Ski Prods. Inc., 49 USPQ2d 2001 (TTAB
1999); In re Pingel Enter., Inc. 46 USPQ2d 1811 (TTAB 1998). See also First Brands
Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1 USPQ2d 1779 (9th Cir. 1987) (no acquired
distinctiveness found where “[i]t did not, for example, order consumers to look for the
‘familiar yellow jug’”); Sykes Lab’y, Inc. v. Kalvin, 610 F. Supp. 849 (C.D. Cal. 1985)
(cosmetic container held without acquired distinctiveness because claimant “never
promoted its design separate and apart from the trademark name”).
Applicant takes issue with the Examining Attorney’s “dismiss[al]” of its acquired
distinctiveness evidence because Applicant did not provide “look-for” advertising, and
argues that:
So-called ‘look-for’ advertising is dated and antiquated, and
Applicant does not consider it to be an effective modern
model of advertising, particularly where Applicant’s
distinctive trade dress has been recognized by consumers
for decades … [and] that “[t]he ultimate test in determining
acquisition of distinctiveness under Section 2(f) is not
Applicant’s efforts, but Applicant’s success in educating the
public to associate the claimed mark with a single source.
By this standard, the test is not “look for” advertising, but
whether the evidence shows that consumers use the trade
dress to identify the source of the goods. And the evidence
most certainly does.
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Applicant’s reply brief, p. 9.25 (Internal citations omitted).
As Applicant correctly points out, “look-for” advertising is not always necessary –
“what matters is Applicant’s success in obtaining the consuming public’s recognition
of Applicant’s Trade Dress as emanating from Applicant.” Applicant’s brief, p. 22.26
The problem with this record is that there is little evidence that the features which
Applicant claims as its mark – the bulbous toe box, ankle collar, outsole shape and
color, rear heel panel, vamp from back to front, and eyelets – have been advertised,
or are recognized, individually or collectively as source indicators for the identified
lace-up boots. Instead, the record indicates that many lace-up boots combine some or
all of the claimed features in highly similar product designs. The little evidence of
consumer recognition of the product design features – the retailer declarations – does
not tout any of the claimed features, and refers to an image which includes another
visible source indicator (i.e., the tree design element) used in the advertising
encountered by customers. In these circumstances, where Applicant’s advertising
consistently includes the TIMBERLAND word mark and tree logo design and often
touts the “original yellow” color, the absence of advertising that points out the claimed
features of Applicant’s product design drastically diminishes the probative value of
Applicant’s advertising expenditures and sales as contributing to any acquired
distinctiveness of its product design.

25 19 TTABVUE 10.
26 16 TTABVUE 24.
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In view of the foregoing, the Converse factors concerning Applicant’s advertising
practices and sales of its proposed product design mark are not particularly probative
of acquired distinctiveness.
5. Intentional Copying
Applicant observes that competitors have used particular elements of its trade
dress, and that others have “slavishly” copied its product design. However, “[c]opying
is only evidence of secondary meaning if the [copier’s] intent in copying is to confuse
consumers and pass off his product as the plaintiff’s.” Stuart Spector Designs v.
Fender, 94 USPQ2d at 1575 (quoting Thomas & Betts Corp. v. Panduit Corp., 36
USPQ2d at 1072). Applicant did not assert, and from the record it does not appear,
that the third-party uses are made for the purpose of confusing consumers or to pass
off these third-party products as Applicant’s. The third-party uses clearly display the
manufacturer’s trademark or trade name on the boots or in accompanying
advertising. There is no evidence that any third-party copying of one or more
elements of Applicant trade dress was intentional, or even if so, was due to an intent
to confuse customers as to the source of the products. See Thomas & Betts Corp. v.
Panduit Corp., supra.
6. Unsolicited Media Coverage of the Product Embodying the Mark
Applicant has introduced numerous examples of unsolicited media coverage, and
argues that these unsolicited publications “characteriz[e] the boots bearing
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Applicant’s Trade Dress As ‘iconic’ and ‘instantly recognizable.’” Applicant’s brief p.
21.27 These excerpts include, by way of example, the following:28
 Timberland: 40 years of the yellow boot29
The Timberland boot is one of fashion’s most recognizable
fashion classics – favoured by everyone from working men
to fashion designers and pop royalty, so what’s the secret
to success?
…
Made up from 39 components and constructed via 80
separate factory floor steps, you’d be forgiven for thinking
the subject in question is a piece of Nasa technology. This,
however, is the drill dedicated to the creation of a pair of
yellow, eight-hole Timberland boots.
…
Defined by this yellow boot, the brand took off in the 1990’s
when US hip-hop artists wore Timberlands.

27 16 TTABVUE 23. In making this claim, Applicant points to the following record evidence:
Applicant’s Mar. 30, 2016 Response, Exhs. A, B, D, E, and G; TSDR 42-48, 51-69 and 76-109,
and Applicant’s Dec. 21, 2017 Response, Exh. W; TSDR 88-94.
28 The SUPERBRANDS excerpt (March 30, 2016 Response; TSDR 62-69) has little probative
value because it provides “AN INSIGHT INTO BRITAIN’S STRONGEST BRANDS,” and not
the United States’ strongest brands.
29 March 30, 2016 Response; TSDR 43. http://www.theguardian.com/fashion/2013/. Full urls
at TSDR cites.
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 FALL FASHION with REFINERY2930

The article states: “Timberlands are one of the most
recognizable shoes of all time … Launched 40 years ago as
a durable, waterproof shoe for workmen, the wheat-colored
boots were repurposed in the 1990’s by members of the hip-
hop community.” The article also features photos of
celebrities wearing the boots, an example of which is shown
above, and blurbs from celebrities and designers discussing
their opinion of the boot, some referencing the yellow color.
For example, Rebecca Taylor, designer, comments: “I know
the guys at my gym wear them on Flatbush Avenue in
Brooklyn. … It’s the yellow with the Timberlands ….”
 News: Timberland Celebrates The 40th Anniversary
Of Their Original Yellow Boot @Timberland31

30 Id. at TSDR 46-48. http://shine.yahoo.com/fall-fashion.
31 Id. at TSDR 50.
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 A blurb in Highsnob discussing Timberland Boot
Collaborations and noting the “Original Yellow
Boot”32

32 Id. at TSDR 52.
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 5 of Fashion’s Most Iconic Pieces/Hypebeast33

As discussed in Section 1 above, Applicant also made of record excerpts and
images of celebrities wearing Applicant’s Timberland boot, for example:34

33 Id. at 54-55. http://hypebeast.com/2013/10/five-iconic-pieces-of-fashion (emphasis added).
34 See footnote 14. Specific examples found at Applicant’s March 30, 2016 Response; TSDR
78 and 144, respectively.
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While the record is replete with evidence of unsolicited media coverage of
Applicant’s Timberland boot, such coverage is insufficient to establish acquired
distinctiveness, because there is simply no evidence that the media coverage and
celebrity usage have focused on the product trade dress Applicant seeks to register.
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See Stuart Spector Designs v, Fender, 94 USPQ2d at 1575 (finding that examples of
exposure of guitar bodies through third parties’ permitted or licensed use in various
media, including television, live performances, movies, charitable events, and
merchandising, did not direct potential consumers to identify the guitar bodies as an
indication of commercial source, and were not probative of acquired distinctiveness).
Instead, much of the record media coverage highlights the classic “wheat” or “yellow”
colored boot, and the presence of the Timberland tree logo burned into the side of the
leather upper of Applicant’s boots, of which the Hypebeast article opines “made the
boot an icon.”
E. Conclusion
In conclusion, and considering all of the evidence relevant to the six Converse
factors in determining whether Applicant’s proposed mark has acquired
distinctiveness, we find, for the reasons discussed above, that Applicant has not
established that its proposed product design has acquired distinctiveness as a source
identifier in connection with its lace-up boots. In view of our ruling on the issue of
acquired distinctiveness, we do not reach the functionality refusal under Section
2(e)(5) of the Act or the requirements for an amended drawing and corresponding
description to reflect only assertedly capable features. In re Mueller Sports Med., Inc.,
126 USPQ2d 1584, 1590 (TTAB 2018) (“Having found that Applicant’s mark is merely
descriptive of a feature or characteristic of the goods, we need not reach the
alternative ground for refusal that Applicant’s mark is deceptively misdescriptive.”).
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Decision: The refusal to register Applicant’s mark under Trademark Act Sections
1, 2, and 45 on the ground that Applicant’s proposed mark is a non-distinctive product
design that has not acquired distinctiveness under Section 2(f) of the Act is affirmed.