Product design is not inherently distinctive, but product packaging can be inherently distinctive. See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 54 USPQ2d 1065 (2000) (“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”). “[A] mark is inherently distinctive if ‘[its] intrinsic nature serves to identify a particular source.'” Id. at 210, 54 USPQ2d at 1068 (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 23 USPQ2d 1081, 1083 (1992)). 

As discussed in a previous blog post, the TTAB previously held that a specific 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) ("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 [casino or hotel services]").

But, a year later, the TTAB held that six parallel beams of light projecting skyward from a building to appear as guitar strings was not inherently distinctive for those same services, which was "wholly distinct from any physical structure" and did not constitute product packaging, and failed to function as a trademark. In re Seminole Tribe of Florida, Ser. No. 90318831 (TTAB Dec. 13, 2024). The proposed mark was described in the application as "consists of six parallel, vertical beams of light representing guitar strings, extending 20,000 feet in the air from the top of a guitar-shaped building. The guitar-shaped building is not part of the mark and merely shows the placement of the mark." 

The TTAB found that, by not claiming any specific "guitar indicia" for the structure upon which the six beams of light are projected, that structure is not part of the mark, and cannot serve to inform consumers about what the mark means or represents. By "intentionally omitting" that physical structure, the beams of light shining skyward from an undefined structure would not be distinctive unless "presented with sufficient guitar indicia to allow consumers to make a connection between the beams of light and a guitar." 

"We do not believe such an unusual mark, one that is wholly distinct from any physical structure, constitutes product packaging." The TTAB further noted that  any uncertainty about this conclusion would trigger the rule from the WalMart Stores case that in “close cases, … courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning” (citing 529 U.S. at 215, 54 USPQ2d at 1070).

In the alternative, the TTAB then applied the Seabrook test for determining inherent distinctiveness in the examination of product packaging trade dress, and held that the light beams were "not inherently distinctive" because the evidence of record was sufficient to show that projecting light beams skyward is a common promotional practice, and "Applicant's light beams—divorced from any guitar indicia—are merely a refinement of that practice." 

Notably, TMEP 1202.02(b)(ii) states that Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977) is "not applicable to product design trade dress, [but] is still viable in the examination of product packaging trade dress." The Seabrook factors are as follows:

1. 1. a "common" basic shape or design;
   2. unique or unusual in a particular field;
   3. 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; or
   4. capable of creating a commercial impression distinct from the accompanying words.

"Because the applied-for mark does not function as an inherently distinctive mark for casino, hotel, restaurant and bar services, we affirm the failure to function refusal."  

John Welch suggested that affirming a failure to function refusal because a mark "does not function as an inherently distinctive mark for casino, hotel, restaurant and bar services" was a non sequitur. He also criticized the Board for accepting the description of the mark as "vertical beams of light" but then ignoring the rest of the description in the application.

The "guitar-shaped building," however, was expressly described in the application as being "not part of the mark." And the applied-for mark could have prevented other casinos or hotels from using six parallel light beams that could give any building the illusion of looking as if it was part of a six-string guitar.