The shape of a building can be registered as inherently distinctive trade dress in the United States – if it is distinctive and unusual for buildings of that type – holds the U.S. Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB”) in a pair of precedential decisions published this summer.

In the cases at issue, the Seminole Tribe of Florida (“Seminole Tribe”) sought trademark registration for a guitar-shaped building for hotel and casino services. See Figure 1. Palacio del Rio, Inc. (“Palacio del Rio”) sought two registrations for the river-side view and street-side view of its modular designed building for hotel services. See Figure 2. The U.S. Patent and Trademark Office (“PTO”) refused both parties’ trademark applications on the basis that the building designs constituted non-distinctive trade dress; both parties appealed the refusals to the TTAB.¹

Is a Building “Product Packaging” or “Product Design” Trade Dress?

Courts have long recognized that “trade dress,” i.e., the visual appearance of a company’s goods or services and their associated packaging, can serve the same source-identifying function as more traditional trademarks, such as brand names and logos. Thus, brand owners can, and do, register their trade dress at the PTO.

However, the law divides trade dress into two separate categories: product design and product packaging. Of the two, only product packaging trade dress can be inherently distinctive -- meaning that the trade dress is immediately recognizable without the need to prove consumer recognition.² To register product design trade dress on the Principal Register, the owner must take the extra step of proving that its product design trade dress has “acquired distinctiveness” as a source-identifier. Thus, it is often more expensive and more difficult to register product design trade dress than product packaging trade dress on the Principal Register.

The TTAB held in this pair of cases that the shape of a building is neither product packaging nor product design, but some “tertium quid” (third thing) akin to product packaging.  These holdings clarify that the shape of a building can be inherently distinctive. This, of course, begs the question of how to evaluate inherent distinctiveness in this unusual context. 

Establishing Inherent Distinctiveness

The TTAB applied the well-known Seabrook factors to determine whether the parties’ buildings were, in fact, inherently distinctive.³

Palacio del Rio argued that its hotel’s total modular design was distinctive because the unique combination of basic elements created an instantly recognizable overall appearance to customers. In support of this position, Palacio del Rio submitted evidence of architectural and industry specific publications from the 1960s, current customer affidavits about the uniqueness and fame of the building’s design, and advertising expenditures. The TTAB was unmoved. It found that the modular design was a mere ornamentation of common architectural design elements. Particularly damaging for Palacio del Rio was the evidence submitted by the PTO examiner documenting numerous other buildings throughout the United States that utilize a similar modular design. 

The Seminole Tribe argued that its hotel’s guitar shape was unique as a building design in general but also among buildings housing hotels, restaurants, and casinos. It submitted evidence of trade dress registrations granted by the PTO to building designs that were unique in their industries, earned media advertisement value, and a wide array of current industry specific and general consumer publications highlighting the unique guitar shape design. The TTAB considered the media coverage to be particularly persuasive because it highlighted the distinctiveness of the building for relevant consumers. 

And so, the TTAB granted registration to the Seminole Tribe’s guitar shaped building but denied registration to Palacio del Rio’s modular designed building.

Lessons for Brand Owners

1. Be Specific About the Protectable Elements of Your Building

Palacio del Rio submitted drawings that depicted a wide range of features on two sides of its building. Though Palacio del Rio defined its mark more specifically in the appeal brief, the TTAB stated it is the “drawing of the mark, not the words an applicant uses to describe it [that] controls what the mark is."⁴ The drawings here included common architectural elements such as arches, columns, gazebos, and even an HVAC enclosure. This opened the door for the PTO to enter evidence showing other hotel exteriors featuring these elements. The commonality of these design elements was one of the key reasons the TTAB denied registration. Perhaps the outcome would have been different had Palacio del Rio submitted drawings showing a more specific and unique combination of features.

2. Understand the Competitive Landscape

The most significant difference between the two records is that there was ample evidence of hotels using the same modular features claimed in Palacio del Rio’s drawings but there was zero evidence of other hotels or casinos shaped like a guitar. The TTAB noted that the many other similar hotels supported a conclusion that the modular elements were mere ornamentation rather than a distinctive design. Applicants should therefore be realistic about the uniqueness of their trade dress. If the claimed trade dress incorporates common elements, then highlighting the unique arrangement of those elements may assist with demonstrating distinctiveness. 

3. Present Compelling Evidence Relevant to the Industry

Although Palacio del Rio submitted some current publications highlighting the unique design, they primarily relied on vintage architectural publications from the 1960s. Evidence of use and industry reception is compelling for five decades of use, but these publications highlighted the benefits to construction rather than the aesthetic uniqueness of the modular design. Customer affidavits were also deemed irrelevant because they were ordinary citizens instead of experts like architects, travel agents, and engineers. Contrary to Palacio del Rio, Seminole Tribe submitted evidence of current media coverage citing industry publications, national and international press coverage, social media engagement, and celebrity attendees all focused on the unique guitar shape.

4. Provide Context for Advertising Figures

Palacio del Rio submitted evidence of the money spent on advertising and the subsequent millions of dollars in sales generated from these promotions. The TTAB noted that it lacked sufficient context in which to evaluate these numbers. In comparison, Seminole Tribe submitted earned media advertisement value and social media impressions which more clearly explained the reach of the Tribe’s advertising campaigns. Additionally, the advertising should promote the claimed trade dress in a way that is creates a commercial impression distinct from the name of the product or the building.  The TTAB took issue with Palacio del Rio’s distinctiveness evidence because images of the building almost always featured the name and logo associated with the hotel. The Seminole Tribe, by contrast, included photos of its building that were taken from such a distance that no signage was visible.

Conclusion

With Palacio del Rio and Seminole Tribe, the TTAB has further clarified the registration requirements for trade dress in building exteriors, establishing that the design of a building can be registered if is unique to a specific industry. A brand owner contemplating building a brand around the appearance of its building should be realistic about the uniqueness of the design and engage in a strategic marketing campaign that calls out the distinctive elements of the building and showcases the building on its own. Perhaps if Palacio del Rio had sought trade dress in the 1970s when the hotel was first constructed – and before others began using the once-revolutionary modular design – they could have obtained registration. However, over the span of five decades the design that once made the Palacio del Rio unique has now become common, barring trade dress registration.

The cases are: In re Seminole Tribe of Florida, 2023 U.S.P.Q.2d 631 (TTAB 2023) [precedential]; In re Palacio Del Rio, Inc., 2023 U.S.P.Q.2d 630 (TTAB) [precedential].

The author thanks Alexander Liederman, Foley & Lardner LLP Summer Associate and rising 3L at The George Washington University Law School, for his contributions to this article.

¹ The Examining Attorney also refused the Seminole Tribe’s application on the basis that the shape of the building failed to function as a trademark. However, she failed to reiterate that refusal in the operative final Office Action, so the TTAB held that the PTO forfeited the failure-to-function refusal. In re Seminole Tribe of Florida, 2023 U.S.P.Q.2d 631, at*6 n.13 (TTAB 2023) [precedential].

² Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992); Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000).

³ The test looks at the trade dress in question and determines whether (1) the trade dress is a common basic shape or design, (2) the trade dress is unique or unusual in the particular field, (3) the trade dress is a mere refinement of a commonly-adopted and well-known form of ornamentation, and (4) the trade dress is capable of creating a commercial impression absent accompanying words. Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342 (C.C.P.A. 1977).

⁴ In re Palacio Del Rio, Inc., 2023 U.S.P.Q.2d 630, at *5 (TTAB 2023) [precedential] (citing In re Change Wind Corp., 123 U.S.P.Q.2d 1453, 1469 n.6 (TTAB 2017).