PUBLISHED

UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT

No. 23-1150

TBL LICENSING, LLC,

Plaintiff - Appellant,

v.

KATHERINE K. VIDAL, in her official capacity as Director of the United States Patent & Trademark Office; UNITED STATES PATENT & TRADEMARK OFFICE,

Defendants - Appellees.

-----------------------------------

INTERNATIONAL TRADEMARK ASSOCIATION,

Amicus Supporting Appellant.

Appeal from the United States District Court for the Eastern District of Virginia, at Alexandria. Claude M. Hilton, Senior District Judge. (1:21-cv-00681-CMH-IDD)

Argued: January 24, 2024 Decided: April 15, 2024

Before GREGORY, QUATTLEBAUM, and BENJAMIN, Circuit Judges.

Affirmed by published opinion. Judge Quattlebaum wrote the opinion, in which Judge Gregory and Judge Benjamin joined. USCA4 Appeal: 23-1150 Doc: 60 Filed: 04/15/2024 Pg: 2 of 33

ARGUED: Elizabeth D. Ferrill, FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP, Washington, D.C., for Appellant. Christina J. Hieber, UNITED STATES PATENT AND TRADEMARK OFFICE, Alexandria, Virginia, for Appellee. ON BRIEF: Douglas A. Rettew, Naresh Kilaru, Troy V. Viger, FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP, Washington, D.C., for Appellant. Thomas W. Krause, Solicitor, Benjamin T. Hickman, Associate Solicitor, Office of the Solicitor, UNITED STATES PATENT AND TRADEMARK OFFICE, Alexandria, Virginia; Jessica D. Aber, United States Attorney, Richmond, Virginia, Yuri S. Fuchs, Assistant United States Attorney, OFFICE OF THE UNITED STATES ATTORNEY, Alexandria, Virginia, for Appellees. Jonathan E. Moskin, FOLEY & LARDNER LLP, New York, New York; A. Justin Ourso III, OURSO COUNSELS, L.L.C., Baton Rouge, Louisiana; Jack A. Wheat, MCBRAYER PLLC, Louisville, Kentucky, for Amicus Curiae.

2 USCA4 Appeal: 23-1150 Doc: 60 Filed: 04/15/2024 Pg: 3 of 33

QUATTLEBAUM, Circuit Judge:

TBL Licensing, LLC, more commonly known as Timberland, tried to register

certain features from the design of its popular boot under the Lanham Act as trade dress.

But the law prohibits the registration of product designs that have not acquired a distinctive

meaning identifying the product with its maker in the minds of the consuming public. See

TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 28–29 (2001). It also bars the

registration of product designs that are functional since protection of functionality is

reserved for patent law. Id. at 29. Concluding the boot design is not distinctive, the United

States Patent and Trademark Office (“USPTO”) refused to register it. TBL turned to federal

district court, which agreed with the USPTO that the boot design is not distinctive and

added that it is impermissibly functional. On either independent ground, the district court

granted the USPTO’s motion for summary judgment. On distinctiveness, the issue we face

is not whether the public recognizes the entire product as Timberland’s perhaps iconic boot;

rather, we must decide whether the district court reversibly erred in concluding that the

subset of design features that TBL selectively sought to register lacks distinctiveness in the

public’s view. We hold that the district court did not reversibly err. So, without deciding

functionality, we affirm the distric