TTAB Dubiously Finds that Vertical Light Beams atop Guitar-Shaped Building Fail to Function as a Source Indicator
In a less than enlightening decision, the Board affirmed a refusal to register the proposed mark shown below as a service mark for "casinos" and "hotel, restaurant and bar services," finding that the mark "is not an inherently distinctive source identifier and therefore, fails to function as a service mark for Applicant’s services." According to the Board, it must consider the proposed mark in the abstract, unconnected to a building, and in that light the mark is merely a refinement of a "commonplace promotional practice." In re Seminole Tribe of Florida, Serial No. 90318831 (December 13, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon).
The proposed mark, according to the application, "consists of six parallel, vertical beams of light representing guitar strings, extending 20,000 feet in the air from the top of a guitar-shaped building. The guitar-shaped building is not part of the mark and merely shows the placement of the mark." [You will recall that the guitar shape of the hotel building was found to be inherently distinctive product packaging trade dress in the Board's Seminole seminal ruling in In re Seminole Tribe of Florida, 2023 U.S.P.Q.2d 631 (TTAB 2023). [TTABlogged here]]. Here, the Board emphasized that "the drawing depicts, and the description of the mark refers to, a guitar-shaped building, but both do so only to make clear that the guitar-shaped building is not part of the applied-for mark."
Considering the proposed mark to be merely beams of light, the Board noted the evidence of four other uses of vertical light beams: the 911 Memorial in New York City, the illumination in Washington, DC, at the Covid-19 ceremony, a promotion for a Chicagoland McDonald's restaurant, and a single light beam at the Luxor Hotel in Las Vegas.
The Board then determined that applicant's light beams constitute product design, not product packaging [unlike the guitar shape of the hotel building] and it pointed out that product design can never be inherently distinctive. It then reached the same conclusion regarding lack of inherent distinctiveness by applying the Seabrook test:
We cannot say that such practices are particularly common for casinos and hotels, as we have only one example of such a use in the record (the Luxor in Las Vegas). *** We find the evidence of record is sufficient to show that projecting light beams skyward is a common promotional practice and that Applicant’s light beams—divorced from any guitar indica—are merely a refinement of that practice. As such, the applied-for mark is not inherently distinctive.
"Because the applied-for mark does not function as an inherently distinctive mark for casino, hotel, restaurant and bar services, we affirm the failure to function refusal." [Isn't this a non sequitur? -ed.].
Read comments and post your comment here.
TTABlogger comment: This whole decision makes no sense to me. I don't understand how the Board can accept one part of the mark description "vertical beams of light" and then ignore the rest of the description. Applicant is not seeking to register a mark in the abstract, but only for hotel and casino services rendered in a building. A registration would not give it the right to challenge light beams on a McDonalds or at the Mall in DC.
Text Copyright John L. Welch 2024.
11 Comments:
Thank you for a very clever posting.
Ditto Carl's comment. This decision severely lowers my trust in the TTAB to render rational decisions in cases that present unusual facts. Had the applicant included this feature in the original application for the building design, it would have been included as part of the mark under the reasoning of that decision so why now is it suddenly just rays of light without any context?This should be appealed
I think the Board got this one right. The application was incoherent. It needed to pick a lane as to whether the context was part of the mark or not.
This application was the equivalent of claiming the color red for t-shirts, stating that the image of the t-shirt in the mark was just for placement and not part of the mark, and then trying to argue that you can't ignore the unique shape of the t-shirt.
Also, applicant's logic, that if the shape of a guitar without strings can be a source indicator that must mean that so too can strings without a guitar, was nonsensical.
This felt to me like applicant was trying for a bait-and-switch, where they want the PTO to read their mark narrowly but plan to enforce it broadly. I'm glad the Board called them on it.
Thank you John for jumping on this decision so quickly and discussing my continuing trials and tribeulations [not sic] with The Guitar Hotel registrations.
I haven't had time to really digest it, but one of my immediate reactions was that they completely ignored the fact that three of the four examples they provided were not trademark uses and should not have been considered. The Luxor is the only acceptable comparison and it is definitely a source-indicating, trademark use! A point I made very clearly in my brief.
To be continued. . .
As a comparison, note US Reg No 2437874 ("...a formation of light beams resembling the conical framework of a tipi..." for "Hotel Services; Restaurant Services") and US Reg No 2535181 ("...a formation of light beams resembling the conical framework of a tipi..." for "...casino facilities...").
A lot of this makes no sense. Almost as if the idea of lights confused the judge about trademarks in general. A very short decision that seems to suggest it was not a well thought out decision.
This language:
"With no guitar indicia, we would have only six beams of light, which will merge into a single beam when viewed either from the side or from enough of a distance."
So, if you look at any trademark on a sign from the side it will disappear, so what is he saying?
Also this:
"Because Applicant has excluded the structure below the lights from the applied-for mark, what consumers see is effectively a group of light beams without any discernable structure below."
But, what if the six strings were made of steel or something? or if they were three stripes of light like the Adidas mark on top of an Adidas store? Coudl six lines not be a trademark? Of course they can.
Also this:
"The strings alone have nothing to support them."
Why do strings need support? It is a mark consisting of six lines. Why does it need to be connected to a building that looks like a guitar?
I think the way the drawing page was prepared became the main issue here. A better drafted application perhaps could have avoided some of the issues.
The ground of refusal that was affirmed was said to be “that the applied-for mark is not an inherently distinctive source identifier and therefore, fails to function as a service mark for Applicant’s services.” As John said, this is indeed a non sequitur. These are supposed to be two separate rules of law. The test of one is different from the other. To smash them together makes no sense. It would mean that all §2(f) registered marks (not inherently distinctive) were wrongly registered because they fail to function as marks.
The vertical beams of light were held to be “product,” not packaging” and thus could not be classified as “inherently distinctive.” What “product”? The product for this registration is defined as casino, restaurant and bar services. The T.T.A.B. said the lights were a “promotional” device. Promoting what? -- the casino services – that’s the “product”.
@Anonymous, the description of the mark made it clear that the light emanates from a guitar shaped building. Terrible decision fot this and the many reasons noted by others.
Interesting take - "bait and switch," but the reality was that my brief did not argue that point, it is in my Reply Brief and I actually thought of it the day before filing and included it as an afterthought. It is just one line at the end of the brief. It was very interesting to me that the TTAB focused on it and ignored all of my argument.
WOW - in all my research I never found those marks!!!! Thank you. How did you find them?????
The drawing was a big part of the initial rejection and I devoted alot of space in the brief to it. The opinion didn't even address it! Honestly, I never thought of filing the drawing without the disclaimed guitar in it. Food for thought! Thank you.
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