  United States Court of Appeals
      for the Federal Circuit
               __________________________

                 (Serial No. 78/666,598)
          IN RE CHIPPENDALES USA, INC.
              __________________________

                       2009-1370
               __________________________

    Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board.
              ___________________________

                Decided: October 1, 2010
              ___________________________

    STEPHEN W. FEINGOLD, Kilpatrick Stockton LLP, of
New York, New York, argued for appellant. With him on
the brief was MICHELLE M. GRAHAM.

    CHRISTINA J. HIEBER, Associate Solicitor, Office of the
Solicitor, United States Patent and Trademark Office, of
Alexandria, Virginia, argued for the Director of the
United States Patent and Trademark Office. With her on
the brief were RAYMOND T. CHEN, Solicitor. Of counsel
was KRISTI L.R. SAWERT, Associate Solicitor.
                __________________________
IN RE CHIPPENDALES USA                                    2


   Before DYK, FRIEDMAN, and MOORE, Circuit Judges.
DYK, Circuit Judge.
    Appellant Chippendales USA, Inc. (“Chippendales”),
appeals a decision of the Trademark Trial and Appeal
Board (“the Board”). The Board affirmed the examining
attorney’s refusal to register the “Cuffs & Collar Mark” as
inherently distinctive. We affirm.
                       BACKGROUND
    The applicant, Chippendales, is in the business of
providing adult entertainment services for women. It
opened its first strip club in Los Angeles in 1978. In 1979,
Chippendales performers began wearing an abbreviated
tuxedo—wrist cuffs and a bowtie collar without a shirt—
as part of their act. This costume, referred to as the
“Cuffs & Collar,” was featured prominently in Chippen-
dales’ advertising and performances over the past several
decades. It is set forth below:




    In November 2000, Chippendales filed an application
to register the Cuffs & Collar trade dress. In 2003, the
3                                   IN RE CHIPPENDALES USA



United States Patent and Trademark office (“PTO”)
issued Registration No. 2,694,613 for the Cuffs & Collar
for “adult entertainment services, namely exotic dancing
for women.” U.S. Trademark Registration No. 2,694,613
(the “’613 mark”). A mark that is inherently distinctive
qualifies for registration under the Lanham Trademark
Act (“Lanham Act”). See Pub. L. No. 79-489, 60 Stat. 427
(1946) (codified at 15 U.S.C. § 1051 et seq.). A mark can
also qualify for trademark protection under Section 2(f) of
the Lanham Act if the mark has become distinctive
through use in connection with the applicant’s goods in
commerce, known as acquired distinctiveness. See 15
U.S.C. § 1052(f) (“Section 2(f)”).
    Although Chippendales submitted evidence both of
“inherent” distinctiveness and, alternatively, “acquired”
distinctiveness under Section 2(f) of the Lanham Act, the
examining attorney in 2003 concluded that the applicant
was only entitled to a registration based on acquired
distinctiveness. Because of the existing procedure at the
PTO at the time of the decision, Chippendales could not
contest the basis of the examining attorney’s decision.
The sole option at that time would have been for Chip-
pendales to request that the registration be cancelled and
that the mark be remanded for reconsideration. Chip-
pendales was about to commence an infringement action
based on the registration and thus opted not to initiate
the cancellation of its registration under Section 2(f). The
’613 mark became incontestable in 2008 under 15 U.S.C. §
1065. 1

    1  Once a mark has been registered and in continu-
ous use for five consecutive years subsequent to the date
of registration, it becomes “incontestable” under the
Trademark Act, thus resulting in additional benefits to
the owner. See 15 U.S.C. § 1065. The registration for an
incontestible mark is treated as “conclusive evidence” of
IN RE CHIPPENDALES USA                                     4


    In 2005, Chippendales filed a second application,
seeking again to register the Cuffs & Collar mark as
inherently distinctive for “adult entertainment services,
namely exotic dancing for women,” in the nature of live
performances. Chippendales claimed that it was entitled
to a registration on the ground that the mark was inher-
ently distinctive, even though it had secured a registra-
tion under Section 2(f). In the ordinary course, the PTO
bars applicants from registering the same mark for the
same goods and services. See Trademark Manual of
Examining Procedure § 703 [hereinafter TMEP]. How-
ever, here Chippendales petitioned for—and was
granted—a waiver of that procedure, to resolve “the
underlying substantive issue as to whether the proposed
mark is inherently distinctive.” J.A. 664.
    On September 5, 2007, the examining attorney issued
her final Office Action refusing to register the Cuffs &
Collar because the mark was not inherently distinctive.
The Board affirmed. In re Chippendales USA, Inc., 90
U.S.P.Q.2d (BNA) 1535, 1537 (T.T.A.B. Mar. 25, 2009).
The Board held that it was bound to apply our predeces-
sor court’s decision in Seabrook Foods, Inc. v. Bar-Well
Foods, Ltd., 568 F.2d 1342 (C.C.P.A. 1977), to determine
inherent distinctiveness.
    On the merits, the Board concluded that the mark
was not inherently distinctive under Seabrook. As we
discuss below, Seabrook holds that a mark is not inher-
ently distinctive if it, or a variation thereof, is in common
use. 568 F.2d at 1344. The Board considered whether the
mark was inherently distinctive “at the time applicant
began to use the mark nearly 30 years ago.” Chippen-


the validity of the mark, as well as its registration, own-
ership, and the exclusive right of the owner to use the
mark in commerce. 15 U.S.C. § 1115(b).
5                                   IN RE CHIPPENDALES USA



dales, 90 U.S.P.Q.2d at 1538. The Board noted, however,
that “[w]e are not suggesting that registrability should be
determined at any time other than at the time the appli-
cation is pending.” Id. at 1538 n.6. The Board concluded
that the Cuffs & Collar was a common basic shape design,
because it is not unusual for exotic dancers to “wear
costumes or uniforms which are . . . revealing and pro-
vocative.” Id. at 1541. The Board also concluded that the
Cuffs & Collar was not unique or unusual in the particu-
lar field of use, because costumes generally are common to
the field of exotic dancing. See id. at 1542. (“[A]ll strip-
pers begin their routine with some kind of fantasy out-
fit.”).   In reaching this conclusion, the Board cited
examples of “various provocative costumes,” such as “a
stripper representing either a doctor wearing a stetho-
scope, or a construction worker wearing a utility belt, or a
cowboy wearing chaps and a ten-gallon hat.” Id. at 1541.
     Alternatively, the Board concluded that the Cuffs &
Collar mark was not unique or unusual in the particular
field of use because it was inspired by the ubiquitous
Playboy bunny suit, which included cuffs, a collar and
bowtie, a corset, and a set of bunny ears. Id. at 1546.
Finally, the Board concluded that the Cuffs & Collar
mark “was a refinement of an existing form of ornamenta-
tion for the particular class of services,” based on the
same evidence discussed in the treatment of the first two
Seabrook factors. Id. at 1542. The dissent disagreed,
concluding that the Cuffs & Collar mark was in fact
inherently distinctive. Id. at 1544–45. Chippendales
timely appealed, and this court has jurisdiction pursuant
to 28 U.S.C. § 1295(a)(4)(B).
                       DISCUSSION
   This court reviews the Board’s legal conclusions de
novo, and the Board’s factual findings for substantial
IN RE CHIPPENDALES USA                                    6


evidence. See In re Pacer Tech., 338 F.3d 1348, 1349 (Fed.
Cir. 2003); see also 5 U.S.C. § 706(2)(E). Whether an
asserted mark is inherently distinctive involves both a
legal question as to the correct standard to apply and a
factual determination. “The issue of inherent distinctive-
ness is a factual determination made by the board.” See
Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357,
1359 (Fed. Cir. 2001). The PTO has the burden to estab-
lish a prima facie case of no inherent distinctiveness. See
Pacer Tech., 338 F.3d at 1350. Once the PTO sets forth a
sufficient prima facie case, the burden shifts to the appli-
cant to come forward with evidence to rebut the prima
facie case. See id.
                             I
    In order to understand the nature of appellant’s
claim, some background is useful. In general, trademarks
are assessed according to a scale formulated by Judge
Friendly in Abercrombie & Fitch Co. v. Hunting World,
Inc., 537 F.2d 4, 10–11 (2d Cir. 1976), which evaluates
whether word marks are “arbitrary” or “fanciful,” 2 “sug-
gestive,” 3 “descriptive,” 4 or “generic.” 5 Word marks that

    2   Examples of “arbitrary” or “fanciful” marks in-
clude such trademarks as “Rolls-Royce,” “Aunt Jemima’s,”
or “Kodak.” See Moseley v. V Secret Catalogue, Inc., 537
U.S. 418, 429 n.10 (2003). These marks contain “coined,
arbitrary or fanciful words or phrases that have been
added to rather than withdrawn from the human vocabu-
lary by their owners, and have, from the very beginning,
been associated in the public mind with a particular
product . . . and have created in the public consciousness
an impression or symbol of the excellence of the particular
product in question.” Id.
   3    A suggestive mark “suggests characteristics of the
product or service and require[s] an effort of the imagina-
tion by the consumer in order to be understood as descrip-
7                                    IN RE CHIPPENDALES USA



are arbitrary, fanciful, or suggestive are inherently dis-
tinctive. See Wal-Mart Stores, Inc. v. Samara Bros., Inc.,
529 U.S. 205, 210–11 (2000). Descriptive marks that
acquire secondary meaning may also qualify for protec-
tion under Section 2(f), while generic marks generally
cannot qualify for trademark protection at all. Abercrom-
bie & Fitch, 537 F.2d at 9–10.
    Trademark protection may be secured for “trade
dress.” “Trade dress” encompasses the design and ap-
pearance of the product and its packaging, and the Su-
preme Court has held that trade dress can be inherently
distinctive. See Two Pesos, Inc. v. Taco Cabana, Inc., 505
U.S. 763, 775 (1992). Here, the Cuffs & Collars worn by


tive.” See, e.g., Gift of Learning Found., Inc. v. TGC, Inc.,
329 F.3d 792, 797–99 (11th Cir. 2003). For example, the
word mark “LaserSpecialist.com” was determined to be
“suggestive” in conjunction with a center for oculoplastic
surgery. See St. Luke’s Cataract & Laser Inst., P.A. v.
Sanderson, 573 F.3d 1186, 1207–08 (11th Cir. 2009)
(upholding jury verdict that mark was suggestive where
trademark owner presented evidence that cosmetic sur-
geons or oculoplastic surgeons were not generally identi-
fied as “laser specialist[s]” and thus did not immediately
convey the nature of the services offered).
    4   Descriptive marks merely “describe[] the qualities
or characteristics of a good or service.” See Park ‘N Fly,
Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194 (1985).
For example, the word “Nu-Enamel” was held to be de-
scriptive of paint enamels. Armstrong Paint & Varnish
Works v. Nu-Enamel Corp., 305 U.S. 315, 329–30 (1938).
    5   A generic mark is one that “refer[s] to the genus of
which the product is a species.” See Two Pesos, Inc. v.
Taco Cabana, Inc., 505 U.S. 763, 768 (1992). For exam-
ple, the term “Shredded Wheat” was found to constitute a
generic mark. See Kellogg Co. v. Nat’l Biscuit Co., 305
U.S. 111, 112–13 (1938).
IN RE CHIPPENDALES USA                                       8


Chippendales dancers constitutes “trade dress” because it
is part of the “packaging” of the product, which is “[a]dult
entertainment services, namely exotic dancing for
women.”         U.S. Trademark Application Serial No.
78/666,598 (the “’598 Application”).
    This court applies a four-part test for determining the
inherent distinctiveness of trade dress. This four-part
test is set forth in our decision in Seabrook as follows:
    [1] whether it was a “common” basic shape or de-
    sign, [2] whether it was [not] unique or unusual in
    the particular field, [3] whether it was a mere re-
    finement of a commonly-adopted and well-known
    form of ornamentation for a particular class of
    goods viewed by the public as a dress or ornamen-
    tation for the goods, or [4] whether it was capable
    of creating a commercial impression distinct from
    the accompanying words.
Seabrook, 568 F.2d at 1344. If a mark satisfies any of the
first three tests, it is not inherently distinctive. See id.; 1
J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition § 8:13 (4th ed. 2008). The fourth
factor, whether the trade dress was capable of creating a
commercial impression distinct from the accompanying
words, is not applicable here.
    Inherent distinctiveness does not depend on a show-
ing that consumers actually identify the particular mark
with the particular business; this is a question of acquired
distinctiveness, or secondary meaning. 6 As we elaborated

    6    See, e.g., Qualitex Co. v. Jacobson Prods. Co., Inc.,
514 U.S. 159, 163 (1995) (“‘[S]econdary meaning’ is ac-
quired when ‘in the minds of the public, the primary
significance of a product feature . . . is to identify the
source of the product rather than the product itself.’”
(citing Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844,
9                                       IN RE CHIPPENDALES USA



in Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192 (Fed.
Cir. 1994), ultimately “the focus of the [inherent distinct-
iveness] 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 from those of competing manu-
facturers; if so, it is inherently distinctive.” Id. at 1206
(citing Paddington Corp. v. Attiki Imps. & Distribs., Inc.,
996 F.2d 577, 582–84 (2d Cir. 1993)). Thus, if the mark is
inherently distinctive, it is presumed that consumers will
view it as a source identifier. If the mark is not inher-
ently distinctive, it is unfair to others in the industry to
allow what is in essence in the public domain to be regis-
tered and appropriated, absent a showing of secondary
meaning. The policy here is basically the same as the
prohibition against registering generic word marks, or
descriptive marks that have not acquired secondary
meaning.
                               II
    The first issue we consider on appeal is whether the
granting of a Section 2(f) registration for a mark of ac-
quired distinctiveness moots the request for an inherent
distinctiveness registration. 7 Although the parties are in

851 n.11 (1982))); Tone Bros., Inc. v. Sysco Corp., 28 F.3d
1192, 1206 (Fed. Cir. 1994) (“We agree with Tone that
the district court’s analysis on this question confuses the
issues of inherent distinctiveness and secondary meaning.
To be inherently distinctive trade dress need not, as the
district court implies, have an inherent association with
the product, or with the owner of the alleged trade
dress.”).
    7   Section 2(f) provides:

    Except as expressly excluded in subsections (a),
    (b), (c), (d), (e)(3), and (e)(5) of this section, nothing
    in this chapter shall prevent the registration of a
IN RE CHIPPENDALES USA                                   10


agreement that it does not, we are nevertheless obligated
to consider the issue. See, e.g., Sosna v. Iowa, 419 U.S.
393, 398 (1975) (“While the parties may be permitted to
waive nonjurisdictional defects, they may not by stipula-
tion invoke the judicial power of the United States in
litigation which does not present an actual ‘case or con-
troversy,’ and on the record before us we feel obliged to
address the question of mootness before reaching the
merits of appellant’s claim.” (citations omitted)). We note
that this problem is unlikely to arise in the future, as it
appears to have resulted from a procedural defect that
has since been remedied by the PTO. 8 We nonetheless
agree that there are potential collateral consequences
resulting from the form of registration under the Lanham
Act and that this presents a viable controversy.


    mark used by the applicant which has become dis-
    tinctive of the applicant’s goods in commerce. The
    Director may accept as prima facie evidence that
    the mark has become distinctive, as used on or in
    connection with the applicant’s goods in com-
    merce, proof of substantially exclusive and con-
    tinuous use thereof as a mark by the applicant in
    commerce for the five years before the date on
    which the claim of distinctiveness is made.

15 U.S.C. § 1052(f).
    8   As the PTO described at oral argument, the new
procedure requires the examining attorney to explicitly
notify the applicant as to the basis for his decision, and
give the applicant the option to either appeal the underly-
ing refusal of inherent distinctiveness, or waive the
appeal and accept the section 2(f) registration. See Oral
Arg. at 38:13–38:43; TMEP § 715.02.
11                                   IN RE CHIPPENDALES USA



     All registrations for marks in the Principal Register, 9
regardless of whether the mark has acquired or inherent
distinctiveness, are accorded the same benefits and evi-
dentiary presumptions under 15 U.S.C. § 1057(b). 10
Similarly, once a mark has achieved incontestable status
under 15 U.S.C. § 1065, it is entitled to the benefits of
section 1115(b), which precludes all but a limited number
of challenges to a mark’s validity or enforceability, such
as fraudulent procurement of the mark or abandonment
of its use. See 15 U.S.C. § 1115(b)(1)-(9); see also Park ‘N
Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 196
(1985) (holding that an incontestable mark may not be
challenged as merely descriptive).
    However, there may be differences in the context of
enforcement. Every court of appeals to consider the
question has adopted a similar multi-factor test for evalu-
     9  A descriptive term lacking secondary meaning
may not appear on the Principal Register, but may appear
on the Supplemental Register. See E.T. Browne Drug Co.
v. Cococare Prods., Inc., 538 F.3d 185, 202 (3d Cir. 2008).
Unlike registrations on the Principal Register, registra-
tions on the Supplemental Register do not receive some of
the advantages extended to marks registered on the
Principal Register. See 15 U.S.C. § 1094. Supplemental
registration is not prima facie evidence of the validity of
the registered mark, of ownership of the mark, or of the
registrant’s exclusive right to use the registered mark in
commerce. Id. § 1057(b).
    10   Section 1057 provides that a certificate of regis-
tration of a mark upon the Principal Register “shall be
prima facie evidence of the validity of the registered mark
and of the registration of the mark, of the [registrant’s]
ownership of the mark, and of the [registrant’s] exclusive
right to use the registered mark in commerce on or in
connection with the goods or services specified in the
certificate.” 15 U.S.C. § 1057(b).
IN RE CHIPPENDALES USA                                    12


ating the likelihood of confusion necessary to establish a
trademark infringement claim, 11 and all of those tests
include a factor that inquires into the “strength” of the
asserted mark. See 4 McCarthy, supra, §§ 24:30–24:43;
see, e.g., Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d
492, 495 (2d Cir. 1961). 12 A mark’s strength is measured
both by its conceptual strength (distinctiveness) and its
marketplace strength (secondary meaning).            See 2
McCarthy , supra, § 11.83. Thus, whether a particular
mark is inherently distinctive may affect the scope of
protection accorded in an infringement proceeding. See,
e.g., Tana v. Dantanna’s, No. 09-15123, 2010 WL
2773447, at *5 (11th Cir. 2010); Boston Duck Tours, L.P.
v. Super Duck Tours, L.L.C., 531 F.3d 1, 16–17 (1st Cir.
2008); Louis Vuitton Malletier v. Dooney & Bourke, Inc.,

     11  In general, in order to prevail in a trademark in-
fringement case, a plaintiff must show that the alleged
infringer “use[d] in commerce any reproduction, counter-
feit, copy, or colorable imitation of a registered mark in
connection with the sale, offering for sale, distribution, or
advertising of any goods or services on or in connection
with which such use is likely to cause confusion, or to
cause mistake, or to deceive.” 15 U.S.C. § 1114(1)(a)
(emphasis added).
    12  For example, the Second Circuit applies the influ-
ential “Polaroid test,” which applies an eight-factor bal-
ancing test to determine the likelihood of confusion: (1)
the strength of the trademark; (2) similarity of the marks;
(3) proximity of the products and their competitiveness
with one another; (4) evidence that the senior user may
“bridge the gap” by developing a product for sale in the
market of the alleged infringer’s product; (5) evidence of
actual consumer confusion; (6) evidence that the imitative
mark was adopted in bad faith; (7) respective quality of
the products; and (8) sophistication of the consumers in
the relevant market. See Starbucks Corp. v. Wolfe’s
Borough Coffee, Inc., 588 F.3d 97, 115 (2d Cir. 2009).
13                                  IN RE CHIPPENDALES USA



454 F.3d 108, 115 (2d Cir. 2006). The potential for benefit
in an infringement suit of a registration based on inher-
ent distinctiveness creates a viable controversy.
                            III
    The second question we consider is the appropriate
time for measuring the inherent distinctiveness of a
mark. The PTO on appeal argues that the correct time for
measuring inherent distinctiveness is at the time of
registration, whereas appellant argues that the correct
point in time is when the mark is first in use.
    We agree with the PTO’s argument on appeal that the
proper time for measuring inherent distinctiveness is at
the time of registration. This is in fact the accepted
practice at the PTO. See, e.g., 2 McCarthy, supra, § 11.53
(“The Trademark Office will consider the issue of descrip-
tiveness and distinctiveness as existing at the time the
application is examined. If the distinctiveness of the
mark has changed since the original application was filed,
this will be considered.”); TMEP § 1216.01. Our predeces-
sor court has ruled that “the right to register must be
determined on the basis of the factual situation as of the
time when registration is being sought.” In re Morton-
Norwich Prods., Inc. 671 F.2d 1332, 1344 (C.C.P.A. 1982).
For example, in In re Thunderbird Prods. Corp., 406 F.2d
1389 (C.C.P.A. 1969), our predecessor court held that the
mark “cathedral hull” was in general use to describe a
specific type of boat hull by the time the PTO considered
the trademark application. Id. at 1391–92. The court
held that the Board properly concluded that the term
“cathedral hull” was descriptive and not registrable as a
trademark. Id. at 1392; see also Remington Prods. Inc. v.
N. Amer. Philips Corp., 892 F.2d 1576, 1582 (Fed. Cir.
1990) (holding that the phrase “travel care” had “gone
into the public domain as a category of goods designation
IN RE CHIPPENDALES USA                                  14


in the marketplace by reason of its extensive use as such”
by the time the trademark registration was sought, the
point at which the descriptiveness of the mark is properly
determined).
     Judging inherent distinctiveness at the time of first
use would be fundamentally unfair. As we have noted,
“[t]rademark rights are not static.” Morton-Norwich, 671
F.2d at 1344; see Thunderbird Prods., 406 F.2d at 1391–
92 (C.C.P.A. 1969). The test for inherent distinctiveness
depends on whether the mark, or a variation thereof, has
been in common use in general or in the particular field.
A term or device that was once inherently distinctive may
lose its distinguishing characteristics over time. See
Thunderbird Prods., 406 F.2d at 1391–92. 13 It would be
unfair for an applicant to delay an application for regis-
tration and then benefit from having distinctiveness
measured at the time of first use. This would allow an
applicant to preempt intervening uses that might have
relied on the fact that the registration for the mark as
inherently distinctive had not been sought at an earlier
time.
                            IV
    The final question is whether the PTO erred in hold-
ing that the Cuffs & Collar mark is not inherently distinc-
tive as of the date of the Board’s decision. In making this
determination, the Board appropriately considered evi-
dence of the current situation as well as evidence of
earlier uses, since earlier uses can shed light on the
current situation. We think the Board erred in suggest-
ing that any costume in the context of the adult enter-

   13   We note that the Board erred in stating that
“[t]heoretically, if a mark was inherently distinctive when
applicant began use, it remained so thereafter.” In re
Chippendales, 90 U.S.P.Q.2d at 1538 n.6.
15                                   IN RE CHIPPENDALES USA



tainment industry would lack inherent distinctiveness,
but that the Board did not err in its ultimate conclusion.
      The three relevant Seabrook factors that the Board
considered are: “whether the . . . [m]ark is a common basic
shape or design,” “whether [it] is [not] unique or unusual
in the particular field,” and “whether [it] is a mere re-
finement of a commonly-adopted and well-known form of
ornamentation for a particular class of goods viewed by
the public as a dress or ornamentation for the goods or
services.” Chippendales, 90 U.S.P.Q.2d at 1539 (citing
Seabrook, 568 F.2d at 1344). A finding that any one of
these factors is satisfied may render the mark not inher-
ently distinctive. The first Seabrook factor essentially
asks whether the trade dress is common generally: for
example, does it employ a basic shape or design such as a
letter or geometric shape? See Brooks Shoe Mfg. Co., Inc.
v. Suave Shoe Corp., 716 F.2d 854, 858 (11th Cir. 1983)
(noting that the trade dress design on sides of shoe could
be characterized as a V, an arrow, or a 7, and that “such a
basic geometric shape generally is not considered inher-
ently distinctive”). The second factor asks whether the
symbol is common in the particular field of use. See Wiley
v. Am. Greetings Corp., 762 F.2d 139, 142 (1st Cir. 1985)
(“Using a red heart as ornamentation for stuffed animals
is . . . far from unique or unusual. . . . [T]he record con-
tains so many examples of use of a red heart motif on
teddy bears and other stuffed animals, not to mention all
manner of other toys and paraphernalia, that no reason-
able argument on this point can be made.”). The third
factor asks whether or not the mark is a mere refinement
of or variation on existing trade dress within the relevant
field of use. See id. (“The fact that Wiley’s alleged mark is
a red heart, permanently affixed to the left breast of a
teddy bear does not, as she claims, serve to distinguish
her use of the design from others’ uses of hearts on other
IN RE CHIPPENDALES USA                                  16


stuffed animals. These characteristics, even if they in
combination could be deemed unique, are ‘mere refine-
ment[s] of a commonly-adopted and well-known form of
ornamentation for a particular class of goods viewed by
the public as dress or ornamentation for the goods.’”
(citations omitted)).
    We think the Board erred in applying the Seabrook
standard to the extent that it suggested that any costume
would lack inherent distinctiveness in the context of the
live adult entertainment industry. The Board seems to
lump the Cuffs & Collar together with the examples of a
“doctor wearing a stethoscope, or a construction worker
wearing a utility belt, or a cowboy wearing chaps and a
ten-gallon hat,” Chippendales, 90 U.S.P.Q.2d at 1541, and
notes essentially 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,” id. Similarly, the
PTO on appeal appears to adopt this argument as well,
suggesting that Chippendales’ mark is not inherently
distinctive simply because exotic dancers are expected to
wear revealing attire. It is incorrect to suggest that no
costume in the context of the live adult entertainment
industry could be considered inherently distinctive.
Simply because the live adult entertainment industry
generally involves “revealing and provocative” costumes
does not mean that there cannot be any such costume
that is inherently distinctive. Each such trademark must
be evaluated individually under the Seabrook factors.
The “mere refinement or variation” test is not satisfied by
showing that costumes generally are common in the
industry.
    However, the Board did not err in concluding that the
Cuffs & Collar mark is not inherently distinctive under
the Seabrook test. The first factor is inapplicable; there
17                                   IN RE CHIPPENDALES USA



has been no showing that the Cuffs & Collar dress is
common generally. We need not decide whether the
second factor is applicable. The third question is whether
the Cuffs & Collar mark constitutes “a mere refinement of
a commonly-adopted and well-known form of ornamenta-
tion for a particular class of goods.” Seabrook, 568 F.2d at
1344. That test is satisfied if the Cuffs & Collar mark is a
mere variant or refinement of a particular costume. The
Board alternatively found the Cuffs & Collar mark not
inherently distinctive because of the existence of the
pervasive Playboy mark, which includes the cuffs and
collar together with bunny ears.
    Chippendales argues that it was unfair of the Board
to raise the issue of the Playboy bunny costume sua
sponte, thus preventing it from having the opportunity to
respond. However, the Board did not err in relying on the
bunny costume, as it was, in fact, Chippendales’ own
expert, Dr. Shteir, who provided the article (as an exhibit
accompanying her affidavit) which states that “the collar
and cuffs, 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.” J.A. 337 (emphasis added). More-
over, this court may take judicial notice of the existence of
the Playboy bunny trademarks 14 under Fed. R. Evid.
201(c), as we determine that the registration documents
by the PTO are “capable of accurate and ready

     14 The Playboy bunny service mark was first regis-
tered in 1964, and remained in effect until 2004 for “oper-
ating establishments which feature food, drink and
entertainment.”     U.S. Trademark Registration No.
762,884. Playboy has acquired numerous other trade-
marks for its bunny suit, including U.S. Trademark
Registration No. 3,319,643 (“casino and nightclub ser-
vices”) and 3,392,817 (“bar and hotel services; cocktail
lounge services”).
IN RE CHIPPENDALES USA                                    18


determination by resort to sources whose accuracy cannot
reasonably be questioned.” See Fed. R. Evid. 201(b)(2);
Group One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297,
1306 (Fed. Cir. 2005) (upholding district court’s taking of
judicial notice of the fact of a patent’s reinstatement).
     The use of the Playboy mark constitutes substantial
evidence supporting the Board’s determination that
Chippendales’ Cuffs & Collar mark is not inherently
distinctive. The Playboy bunny suit, including cuffs and a
collar, was widely used for almost twenty years before
Chippendales’ first use of its Cuffs & Collar trade dress.
The Cuffs & Collar mark is very similar to the Playboy
bunny costume, although the Cuffs & Collar mark in-
cludes no bunny ears and includes a bare-chested man
instead of a woman in a corset. While the Playboy clubs
themselves did not involve exotic dancing, the mark was
registered for “operating establishments which feature
food, drink and entertainment.” The Cuffs & Collar mark
was also worn by waiters and bartenders at Chippendales
establishments, which Chippendales argues reinforced
the association of the mark with the Chippendales brand.
Additionally, the pervasive association between the
Playboy brand and adult entertainment at the time of the
Board’s decision leads us to conclude that the Board did
not err in considering the mark to be within the relevant
field of use. Thus, the Playboy registrations constitute
substantial evidence supporting the Board’s factual
determination that Chippendales’ Cuffs & Collar mark is
not inherently distinctive under the Seabrook test.
    Chippendales argues that, even if the Playboy mark
were common in the industry, there are separate markets
for male adult entertainment and female adult enter-
tainment, and that the relevant field of use is limited to
exotic male dancing for women. Chippendales urges that
the affidavit of its expert, Dr. Shteir, establishes that the
19                                  IN RE CHIPPENDALES USA



audience for male and female striptease are entirely
different, and that the nature of the experience underly-
ing each are entirely different. We detect no error in the
Board’s approach. The Board considered the affidavit and
ultimately concluded that Dr. Shteir’s affidavit was
unpersuasive. Chippendales, 90 U.S.P.Q.2d at 1542. The
Board was entitled to conclude, in light of the evidence
and after considering Dr. Shteir’s affidavit, that the
relevant market was “adult entertainment,” not adult
entertainment specifically for women, and we see no basis
to disturb the Board’s finding in this respect. 15
    Finally, Chippendales argues that we should overrule
Seabrook, and that the Supreme Court’s decision in Wal-
Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205
(2000), is fundamentally at odds with the Seabrook test.
Chippendales proposes an alternative test to “better
address” the issue of inherent distinctiveness and replace
the “outdated Seabrook test.” 16 Br. of Appellant 58. We


     15  Dr. Shteir also argued that the Cuffs & Collar mo-
tif would have been seen by audiences as a source identi-
fier, and thus is inherently distinctive. J.A. 306–07. We
note that this conclusion does not address the Seabrook
factors, but rather is directed to the alternative test that
Chippendales proposes to “better address” the issue of
inherent distinctiveness. See infra, note 16 and accompa-
nying text.
     16Chippendales proposed the following test for de-
termining the inherent distinctiveness of trade dress:

     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 cos-
IN RE CHIPPENDALES USA                                      20


note that in Wal-Mart, the Court merely held that product
design trade dress can never be inherently distinctive,
and can only qualify for protection through acquired
distinctiveness. Wal-Mart, 529 U.S. at 214–15. 17 Nothing
in the Wal-Mart decision questioned or undermined the
reasoning in Seabrook. Indeed, the Court cited Seabrook
but did not express any disagreement with its use to
determine the inherent distinctiveness of trade dress,
although rejecting it as a test for inherent distinctiveness
in the context of product design. Id. at 213–14. Under
these circumstances, the panel is bound by Seabrook, and
only the court en banc may overturn it. In any event, we
fail to see how appellant’s proposed test represents an
improvement over Seabrook.
   We conclude that the Board’s determination that the
Cuffs & Collar mark was not inherently distinctive is
supported by substantial evidence. We have considered



   tume acts as an intrinsic symbol for the charac-
   ter?
        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.

In re Chippendales, 90 U.S.P.Q.2d at 1538.
   17   The Court noted that “[t]he attribution of inherent
distinctiveness to certain categories of word marks and
product packaging derives from the fact that the very
purpose of attaching a particular word to a product, or
encasing it in a distinctive packaging, is most often to
identify the source of the product.” Wal-Mart, 529 U.S. at
212. In contrast, product design “almost invariably serves
purposes other than source identification.” Id. at 213.
21                                IN RE CHIPPENDALES USA



Chippendales’ additional arguments for setting aside the
Board’s decision, and we find them to be without merit.
                     AFFIRMED
