Trademark Board Finds Building Designs Can Be Protected as Trade Dress

The Trademark Trial and Appeal Board (TTAB) has ruled that building designs can potentially be protected as trade dress.

As Nolo explains,

Trade dress is the overall appearance or total feel of a particular product or service. It consists of all the various elements that are used to promote a product or service. Ultimately, the attributes and elements that make up the trade dress need to identify the source of the product or service to consumers.

For a product, trade dress might be the packaging, the attendant displays, and even the configuration of the product itself. For a service, it might be the decor or environment in which a service is provided—for example, the distinctive decor of the Hard Rock Cafe restaurant chain.

The two recent TTAB decisions are Palace Del Rio (88412764 and 88437801; TTAB; 25 May 2023) and Seminole Tribe of Florida (87890892; TTAB; 25 May 2023).

At issue were the designs of the Hilton Palacio del Rio in San Antonio, Texas and the Seminole Tribe’s Hard Rock Hotel & Casino in Hollywood, Florida, shown below.

Hilton sought trade dress registration for the designs of the “River” and “Street” sides of its hotel.

The Seminole Tribe contended that its building – shaped like a guitar – was like product packaging.

The TTAB confirmed in both cases that a building structure, if it’s inherently distinctive, could be considered protected trade dress.

The TTAB referenced the Supreme Court precedents Two Pesos v Taco Cabana (1992) and Wal-Mart Stores v Samara Bros (2000).

In Two Pesos, Taco Cabana, a fast-food Mexican restaurant chain in San Antonio, Texas, sued Two Pesos, another similar restaurant chain based in Houston, Texas, for trademark infringement under the Lanham Act. Taco Cabana alleged that Two Pesos copied its distinctive trade dress.

Taco Cabana described this trade dress as

a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors. The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme.

The Supreme Court noted that

The general rule regarding distinctiveness is clear: an identifying mark is distinctive and capable of being protected if it either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning.

Th Court concluded that “proof of secondary meaning is not required to prevail on a claim under § 43(a) of the Lanham Act where the trade dress at issue is inherently distinctive,” and thus ruled in favor of Taco Cabana.

In Wal-Mart, Samara Brothers, Inc., designed and manufactured a line of children’s clothing. Wal-Mart Stores contracted with a supplier to manufacture outfits based on photographs of Samara garments.

Samara sued Walmart for, among other things, infringement of unregistered trade dress under §43(a) of the Lanham Act.

The Court noted that trademark protection

has been held to embrace not just word marks and symbol marks, but also “trade dress”–a category that originally included only the packaging, or “dressing,” of a product, but in recent years has been expanded by many courts of appeals to encompass the product’s design.

The Court found that

Design, like color, is not inherently distinctive. The attribution of inherent distinctiveness to certain categories of word marks and product packaging derives from the fact that the very purpose of attaching a particular word to a product, or encasing it in a distinctive package, is most often to identify the product’s source. Where it is not reasonable to assume consumer predisposition to take an affixed word or packaging as indication of source, inherent distinctiveness will not be found. With product design, as with color, consumers are aware of the reality that, almost invariably, that feature is intended not to identify the source, but to render the product itself more useful or more appealing.

“Inherently distinctive” marks, said the Court, are “marks whose primary significance, in the minds of the public, is to identify the product’s source rather than the product itself.”

The Supreme Court upheld the lower court’s finding that the clothing design wasn’t distinctive as a matter of law, finding that “to the extent there are close cases, courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning.”

As Cornell Law School explains,

A secondary meaning is an additional meaning acquired by a non-distinct trademark through its commercial use. To acquire federal trademark protection, a non-distinctive mark must become associated with a single commercial source in the minds of consumers (see e.g., the term “apple"). Secondary meaning can be measured in a variety of ways—from consumer surveys to sales volume to quantity of advertising, among others.

In its decision involving the hotel designs, the TTAB concluded only the guitar-shaped casino, and not the San Antonio hotel, qualified for trade dress protection.

The TTAB found that the Hilton hotel design wasn’t distinctive enough to differentiate it from competing hotels. The TTAB wasn’t swayed by customer statements submitted by Hilton that people found the hotel design “unique,” because it wasn’t established that the consumers knew what designs were common in the hotel industry.

In the Seminole matter, the TTAB found that no other hotel or casino had the same unique guitar-shaped design and thus that the design was distinctive.

Architectural designs can also be protected under copyright law. In 1990, Congress passed the Architectural Works Copyright Protection Act (AWCPA).

As the US Copyright Office defines it,

An architectural work is the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings.

Copyright protects architectural works (i.e., buildings) created on or after December 1, 1990. Copyright also protects unconstructed architectural works (unpublished plans or drawings) if the design was constructed on or before December 31, 2002.

This protection

includes the overall form of the building—the exterior elevations of the building when viewed from the front, rear, and sides—as well as any arrangement and composition of walls or other permanent structures that divide the interior into separate rooms and spaces.