A product's design is not inherently distinctive, but a product's packaging can be inherently distinctive. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23 USPQ2d 1081, 1083 (1992); Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 54 USPQ2d 1065, 1068 (2000).

In Two Pesos, the U.S. Supreme Court affirmed that secondary meaning is not required “where the trade dress at issue is inherently distinctive.”

In Samara Bros., the Supreme Court distinguished “product design” trade dress from “product packaging” trade dress, finding that a seersucker outfit constituted “product design” trade dress. The Court noted that “even the most unusual of product designs — such as a cocktail shaker shaped like a penguin — is intended not to identify the source, but to render the product itself more useful or more appealing.”

Guitar Hotel

The TTAB recently held in an appeal of a refusal under Sections 1, 2, 3, and 45 of the Trademark Act that a guitar-shaped building was inherently distinctive for “Casinos” and “Hotel, restaurant, and bar services” because it was “akin to product packaging.” In re Seminole Tribe of Florida, Ser. No. 87890892, __ USPQ2d __ (TTAB May 25, 2023).

The application by the Seminole Tribe of Florida stated that the trade dress consisted of “a three-dimensional building in the shape of a guitar.”

Their “Guitar Hotel,” with 638 luxury guestrooms, is designed “to resemble back-to-back guitars.”

Trade Dress Case Law

Citing In re Chippendales USA, 622 F.3d 1346, 96 USPQ2d 1681 (Fed. Cir. 2010) (finding the “Cuffs & Collar” trade dress not inherently distinctive for exotic dancing services “because it was inspired by the ubiquitous Playboy bunny suit”) and In re Frankish Enters. Ltd., 113 USPQ2d 1964 (TTAB 2015) (finding “fanciful, prehistoric animal design” for a monster truck inherently distinctive for entertainment services, namely motor sports events), the TTAB held “it is appropriate for us 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.”

The TTAB noted that In re Chippendales USA “does not require us to consider the general purpose of the building to which the trade dress is applied”; and that the uniqueness of the trade dress at issue in the relevant industry was the focus of In re Frankish Enterprises.

Other trade dress cases cited by the TTAB included In re Eagle Fence Rentals, Inc., 231 USPQ 228 (TTAB 1986) (“alternately colored strands of wire arranged vertically in fencing” for renting chain link fencing found inherently distinctive); In re Red Robin Enters., Inc., 222 USPQ 911 (TTAB 1984) (particular design of applicant's bird costume found inherently distinctive for “entertainment services, namely, personal appearances, clowning, antics, dance routines, and charity benefits”).

Not a “Common” Basic Shape or Design

The TTAB considered whether the guitar-shaped building trade dress was a “common” basic shape or design. This is part of the long-standing test to determine whether trade dress is inherently distinctive: namely 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. Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977).

Notably, the record was “devoid of any evidence showing that anyone in the United States other than Applicant has adopted a ‘guitar design' trade dress for a building — there are no others.”

          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 [namely, casino or hotel 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.

Because a building designed in the shape of a guitar was not a common design through which casinos, or hotel, restaurant, and bar services are offered, the TTAB allowed the applied-for trade dress to register without having to show acquired distinctiveness.

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.