Hotel building designs are akin to the packaging of what is being rendered and sold inside, namely, hotel services; thus, constituting trade dress for such services. In re Palacio Del Rio, Inc., Ser. Nos. 88412764 and 88437801, __ USPQ2d __ (TTAB May 25, 2023); see also In re Seminole Tribe of Florida, Ser. No. 87890892, 2023 USPQ2d 631 (TTAB May 25, 2023) (finding that a guitar-shaped hotel is inherently distinctive).

For a three-dimensional mark, an application is limited to one drawing depicting a single rendition of the mark under Trademark Rule 2.52(b)(2). For a mark comprising the entire building (where the two sides are different), however, the application could file a petition under Trademark Rule 2.146, 37 C.F.R. § 2.146, requesting that the rule for a “single” rendition be waived, allowing for both depictions in one application and, as such, comprising one proposed mark for the building. Otherwise, each side would be considered a separate individual mark.

Hilton's Palacio del Rio Hotel

With respect to Hilton's Palacio del Rio building designs (front and back) claimed in two separate trademark applications for hotel services, unlike the result from In re Seminole Tribe of Florida that was decided the same day, the TTAB held that Hilton's designs were neither inherently distinctive, nor had acquired distinctiveness.

Seabrook Factors

The TTAB generally considers the following factors to determine whether a proposed mark is inherently distinctive in connection with the identified services:

(1) Whether the proposed marks constitute a “common” basic shape or design;

(2) Whether the proposed marks are unique or unusual in the field in which they are used;

(3) Whether the proposed marks are a mere refinement of commonly adopted and well-known forms of ornamentation for the particular class of services viewed by the public as a dress or ornamentation for the services; and

(4) Whether the proposed marks are capable of creating a commercial impression distinct from the accompanying words.

Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977) (“the Seabrook Factors”); see also In re Chevron Intell. Prop. Grp. LLC, 96 USPQ2d 2026, 2027 (TTAB 2010).

Any one of the Seabrook Factors, by itself, may be determinative as to whether the mark is inherently distinctive. In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1687 (Fed. Cir. 2010); In re Chevron, 96 USPQ2d at 2028; see also TMEP § 1301.02(c) (“Three-Dimensional Service Marks”).

The TTAB found that Hilton's hotel designs constituted the “common” basic design elements of hotel buildings façades (e.g., grid-like hotel rooms, smooth column, outwardly extending crown, and arches); they are not unique or unusual in the hotel field, and they are mere refinements of commonly-adopted and well-known forms of ornamentation for hotel buildings that would be viewed by the public “as a dress or ornamentation” for Applicant's hotel services. Cf. In re Frankish Enters. Ltd., 113 USPQ2d 1964, 1973 (TTAB 2015) (finding three-dimensional monster truck design, used in connection with monster truck exhibition services, to be analogous to product packaging for the services, constituting trade dress for the services that was unique in the monster truck field).

            Considering the first three Seabrook Factors, we find Applicant's marks are not inherently distinctive. That is, from the evidence of record, we conclude that the average hotel customer could not distinguish Applicant's hotel services from those of third parties based on design elements that are common to hotel building designs in general. Cf. Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1567-68) (TTAB 2009) (“[T]here is sufficient support [in the record] to establish rampant third-party use [of similar guitar designs] over the course of over three decades … [to] confirm the lack of distinctiveness. It is simply not reasonable to conclude that the average consumer of guitars … could distinguish one guitar from another based solely on a millimeter of difference in the body shape.”).

As for the fourth Seabrook factor, the TTAB held that where an applicant's mark contains no wording, the fourth Seabrook factor is not applicable. See In re Procter & Gamble Co., 105 USPQ2d 1119, n.8 (TTAB 2012) (appeal involving a mouthwash container design with no accompanying words in the drawing).

Converse Factors

After finding that the building designs were not inherently distinctive, the TTAB then considered whether the applied-for trade dress had acquired distinctiveness.

            While there is no fixed rule for the amount of proof necessary to demonstrate acquired distinctiveness, the burden is heavier in these appeals because they involve, whether considered separately or together, common elements of modular building designs (e.g., grid-like hotel rooms, smooth column, outwardly extending crown, and arches). See Yamaha Int'l Corp. v. Hoshino Gakki Co., 840F.2d 1572, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988) (evidence required to show acquired distinctiveness is directly proportional to the degree of non-distinctiveness of the mark at issue); In re Sandberg & Sikorski Diamond Corp., 42 USPQ2d 1544, 1548 (TTAB 1996) (“In view of the ordinary nature of these designs and the common use of gems in descending order of size on rings, applicant has a heavy burden to establish that its configuration designs have acquired distinctiveness and would not be regarded merely as an ordinary arrangement of gems.”).

Applying the six factors from Converse, Inc. v. ITC, 909 F.3d 1110, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018) (“the Converse Factors”), the TTAB concluded that, in view of the highly nondistinctive building designs at issue, the evidence of record was insufficient to show acquired distinctiveness.

Accordingly, the TTAB affirmed the refusal to register the applied-for building trade dress.

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