Precedential No. 17: TTAB Finds Hotel Shape Not Inherently Distinctive and Lacking in Acquired Distinctiveness

The Board upheld the USPTO's refusals to register the two proposed marks shown below - comprising the three-dimensional configurations of the front and back of a hotel building - for "hotel services; provision of conference, exhibition, and meeting facilities," finding that the building designs are not inherently distinctive and lack secondary meaning. In re Palacio Del Rio, Inc., 2023 USPQ2d 630 (TTAB 2023) [precedential] (Opinion by Judge Jonathan Hudis).

Inherent Distinctiveness: The Supreme Court's decision in Two Pesos, involving the decor of a Mexican restaurant, established that "adornments to a building structure" may be protectable as a service mark." In Wal-Mart, the Court described that restaurant décor "as either product packaging - which . . . normally is taken by the consumer to indicate origin - or else some tertium quid that is akin to product packaging ...."

Following these teachings, the Board found the designs to be “akin to the packaging of what is being rendered and sold inside, namely, hotel services.” The Board therefore considered whether the proposed hotel configuration marks are inherently distinctive for applicant’s services “under the paradigm established for ‘product packaging:’” i.e, the Seabrook factors:

1. Whether the proposed marks constitute a “common” basic shape or design;
2. Whether the proposed marks are unique or unusual in the field in which they are used;
3. Whether the proposed marks are a mere refinement of commonly adopted and well-known forms of ornamentation for the particular class of services viewed by the public as a dress or ornamentation for the services; and
4. Whether the proposed marks are capable of creating a commercial impression distinct from the accompanying words.

To show that applicant's proposed marks each constitute a "common" basic shape or design, Examining Attorney Erin Falk submitted evidence of a dozen or so hotel buildings having common design elements similar to the proposed marks. In response, applicant submitted declarations from four customers of the hotel (the Hilton Palacio Del Rio in San Antonio, Texas). The Board, however, found the declarations to be of "minimal persuasiveness" since they were few in number and identical ("cookie cutter") in many ways, and they included legal conclusions that were the sole province of the Board. In short, applicant failed to overcome the USPTO's evidence.

Applicant's specimens of use and its advertising evidence depicted the side of the building that also displays the hotel name. There was no evidence that applicant promotes the shape of the building separate from the hotel name, or that customers rely upon that shape to identify and distinguish Palacio's services.

In sum, Applicant’s articles and customer declaration evidence do not overcome the Examining Attorney’s evidence that Applicant’s proposed marks constitute the “common” basic design elements of hotel buildings façades (e.g., grid-like hotel rooms, smooth column, outwardly extending crown, and arches); they are not unique or unusual in the hotel field, and they are mere refinements of commonly-adopted and well-known forms of ornamentation for hotel buildings that would be viewed by the public “as a dress or ornamentation” for Applicant’s hotel services.

Acquired Distinctiveness: In view of the Board's findings under the Seabrook factors, applicant's burden to prove acquired distinctiveness was "commensurately high." The Board turned to the CAFC's Converse factors to assess applicant's Section 2(f) evidence.

1. association of the trade dress with a particular source by actual purchasers (typically measured by customer surveys);
2. the length, degree, and exclusivity of use; 
3. the amount and manner of advertising; 
4. the amount of sales and number of customers; 
5. intentional copying; and 
6. unsolicited media coverage of the services in connection with which the trade dress is used.

Applicant did not submit survey results or any other direct evidence of consumer association of the proposed marks with applicant (Factor 1), nor did it provide any evidence of copying by third parties (Factor 5). Applicant's declaration evidence established that the designs have been in use since 1968, but only at the single, San Antonio location (Factor 2).

As to Factor 3, applicant's advertising did not encourage consumers to view the proposed marks as source indicators. "Given the ways in which Applicant advertises its services, affording little recognition to the design elements of the hotel building itself as shown in the application drawings and described in the Applications, the proposed marks are unlikely to create a commercial impression distinct from the HILTON PALACIO DEL RIO hotel name."

With regard to Factor 4, applicant's sales numbers lacked context as to market share or their significance in the industry. Finally, as to Factor 6, unsolicited media coverage discussed the innovative techniques employed in constructing the hotel rather than directing consumers to look for the elements of the hotel design as source indicators for applicant's services.

And so, the Board concluded that the applicant had failed to establish acquired distinctiveness, and therefore the refusals to register the proposed marks were affirmed.

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TTABlogger comment: Perhaps applicant should have used a guitar shape.

Text Copyright John L. Welch 2023.