In September of last year we blogged about some Florida-based brands battling out trademark disputes at the United States Patent and Trademark Office’s (“USPTO”) Trademark Trial and Appeal Board (“TTAB”).
One of those was a dispute between the Seminole Tribe of Florida and the USPTO Examining Attorney who refused to register the guitar shape of a hotel for casino, hotel & restaurant services absent a showing of “secondary meaning,” which is also known as “acquired distinctiveness.” Secondary meaning is when consumers see a phrase or term (or shape in this matter) and think of it *not* merely as a descriptive or generic phrase/term/shape for the goods or services but as an indicator of the source for those goods or services. The USPTO documents for this application are HERE.
In this case, the Seminole Tribe had already convinced the Examining Attorney that the shape-based trademark had acquired secondary meaning, thus the mark was registrable. However, the Tribe wanted a stronger registration that showed the guitar shape as an “inherently distinctive” mark and not merely something that would otherwise be unregistrable without proving secondary meaning. Thus, the Tribe appealed that specific issue, and the TTAB has decided in favor of the Seminole Tribe.
In a May 25, 2023 precedential decision, the TTAB reversed the Examining Attorney and stated:
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. 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.
III. Conclusion
In sum, we find Applicant’s Mark to be inherently distinctive for Applicant’s Services. Accordingly, the application will proceed to registration without a claim of acquired distinctiveness.
Decision: The refusal to register on the ground that Applicant’s Mark is not inherently distinctive is reversed.
There are a couple of takeaways from this important decision.
First, it is a “precedential” decision, which means that future TTAB panels are bound by it and must consider it in relevant cases.
Second, the Seminole Tribe of Florida already had a path to registration on the Principal Register based on proving acquired distinctiveness. Many trademark owners would have been fine with that and accepted the “asterisk” of a secondary meaning claim on the registration, especially given the cost of an appeal such as this. However, by successfully appealing the finding that the shape of the building cannot be inherently distinctive for casino, hotel & restaurant services, the Seminole Tribe of Florida may be able to more-easily obtain additional trademark registrations for various goods and services where the mark is the shape of the hotel. Similarly, other brand owners who use a shape-based trademark as a type of packaging for their goods or services may be able to convince the USPTO that such shape is inherently distinctive for the goods or services and avoid the cost and time of proving secondary meaning.
If you need to obtain a trademark or service mark registration for a “nontraditional” mark, contact us. Businesses are better served by professionals who remain on the cutting edge of technology and the law. Hiring a trademark attorney who understands the USPTO’s treatment of unique marks is one important step in providing you with strategic IP solutions and not merely IP services.
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