Precedential No. 16: TTAB Finds Guitar Shape for Hotel to be Inherently Distinctive

The Board reversed a refusal to register "trade dress consisting of a three-dimensional building in the shape of a guitar" (shown below), for "casinos" and "hotel, restaurant and bar services," finding the proposed mark to be inherently distinctive. The examining attorney had accepted the Seminole Tribe's alternative claim of acquired distinctiveness under Section 2(f), but the Tribe chose to pursue its claim that the building shape is an inherently distinctive source indicator. In re Seminole Tribe of Florida, 2023 U.S.P.Q.2d 631 (TTAB 2023) [precedential] (Opinion by Judge Melanye K. Johnson).

In Two Pesos, the Supreme Court held that proof of secondary meaning is not required for trade dress that is inherently distinctive, and it upheld the finding that the décor of Taco Cabana's Mexican restaurants was inherently distinctive. In Wal-Mart, the Court distinguished "product design" trade dress from "product packaging," ruling that the former is protectable "only upon a showing of secondary meaning." The Court ruled that the clothing designs at issue there constituted product design. As to the trade dress in Two Pesos, the Court observed:

Two Pesos is inapposite to our holding here because the trade dress at issue [in Two Pesos], the décor of a restaurant, seems to us not to constitute product design. It was either product packaging — which, as we have discussed, normally is taken by the consumer to indicate origin — or else some tertium quid that is akin to product packaging and has no bearing on the present case. (Emphasis by the Board).

The Board then turned to decisions that analyzed the inherent distinctiveness of trade dress used with a variety of services, not just building designs. In Chippendales, the CAFC affirmed the Board's finding that the "Cuffs & Collar" trade dress for erotic dancers was not inherently distinctive because it was "inspired by the ubiquitous Playboy bunny suit," but it also ruled that the Board erred in suggesting that any costume in the adult entertainment industry would lack inherent distinctiveness.

Under Chippendales it is appropriate for the Board to consider "whether a consumer would immediately rely on Applicant's Guitar Design mark to differentiate Applicant's Services from the services of others who offer casinos or hotel, restaurant and bar services." This "set the stage" for the Board's finding in Frankish that the "fanciful, prehistoric animal design" of the cab of a monster truck is "akin to product packaging for an applicant's monster truck services, and therefore, inherently distinctive." The Board found the design to be "unique" and "unusual" in the monster truck field, and the evidence scant, at best, that the design is "a 'mere refinement' of anything, let alone a 'commonly-adopted' and 'well-known form' in the monster truck field."

The Board found the proposed mark be "tertium quid" akin to product packaging. Focusing on the uniqueness of the Tribe's building design in the relevant industry, it concluded that applicant’s building design is inherently distinctive for the Tribe's services.

The Board's conclusion was "further supported" by the Seabrook test for inherent distinctiveness: "whether the trade dress is a “common” basic shape or design; whether it is unique or unusual in a particular field; or whether it is a mere refinement 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."

We find that Applicant’s Mark is not a common design; rather, it is unique, and not a mere refinement of a commonly-adopted and well-known form of ornamentation for Applicant’s Services. Given the uniqueness of Applicant’s three-dimensional Guitar Design trade dress as applied to Applicant’s Services, we find Applicant’s Mark is of a type that consumers would immediately rely on to differentiate Applicant’s Services from casinos or hotel, restaurant, and bar services offered by others, and that it therefore constitutes inherently distinctive trade dress.

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TTABlogger comment: Since the examining attorney had already accepted the Tribe's Section 2(f) claim, why did it bother to pursue the claim of inherent distinctiveness? Steve Feingold explained why he did that in the Chippendales matter: "Why You Should Think Twice Before Accepting a 2(f) Registration"

P.S. Hat tip to FOB Miriam Richter.

Text Copyright John L. Welch 2023.