Chippendales made an appeal in front of the CAFC. However, on 1st October, the court considered upholding the decision of the Board. The Court took side of Chippendales on some of the issues. The key agreement was that the current efforts of registration by Chippendales cannot be seen as mooted by the existing initial contestable registration. The key statement was placed for the potential for advantage in a suit of infringement over a registration on the basis of inherent distinctiveness results in the creation of viable controversy.
The Court also considered rejecting the suggestion of the Board that any costume an adult entertainer wears deals with the lack of inherent distinctiveness. The key reason is that the industry of live adult entertainment generally has an involvement of provocative and revealing costumes, but this does not mean that nobody else can wear the costume, and this can be considered inherent distinctiveness. However, for the others, Chippendales ended up losing the case in each and every point presented. It was argued by Chippendales that there must be determination of inherent distinctiveness related to the mark as of the year 1979 when there had been first utilization of the mark, instead of the present. The claim was disagreed by the Court stating:
“The rights of trademark cannot be considered as static. Instead, a device or a term that had been inherently distinctive once may end up losing the distinguishing attributes with time. For an applicant, it can be considered unfair for delaying an application placed to register the mark, and this will be beneficial to have the measurement of distinctiveness during the first utilization. This is useful in allowing the applicant for preempting utilization of interventions that might have key reliability upon the fact that the mark for inherent distinctiveness had not been registered while an earlier date is sought out.”