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2 June 2023FeaturesPatentsSarah Speight

Fending off: how a giant guitar-shaped hotel struck a chord

A giant guitar-shaped hotel has been given the green light to be registered as a trademark due to its “unique” design, despite initially being rejected as non-distinctive.

The Guitar Hotel is owned by the Seminole Tribe of Florida, a federally recognised Indian tribe that has existed in Florida for thousands of years and is involved in a number of business enterprises, including the Hard Rock Cafe franchise.

The Tribe opened its first Guitar Hotel in 2019 in Los Angeles as part of the Seminole Hard Rock Hotel & Casino Hollywood—which it described at the time as the world’s first and only hotel of its kind.

The hotel’s bigger 36-storey Florida counterpart opened the same year, part of a $1.5 billion renovation and expansion of an already existing resort and dubbed one of the biggest buildings of its kind in the world at 3.2 million square-feet.

After several knock-backs by the US Patent and Trademark Office (USPTO) in its attempt to trademark the design, the Tribe won an appeal at the Trademark Trial and Appeal Board (TTAB) in a precedential decision last week, May 25, after the Board reversed an earlier refusal to register it as a trademark.

The right pitch

The twists and turns of this case highlight that a three-dimensional building design with a—let’s face it—pretty iconic shape, isn’t automatically going to be allowed to be trademarked.

Counsel for the Seminole Tribe of Florida, Miriam Richter, tells WIPR that the Trademark Office “kept vacillating on its basis for rejection, positing several different arguments at different times during the prosecution of the application.”

The Tribe’s trade dress application—filed for “Casinos” and “Hotel, restaurant, and bar services” in International Class 41 and 43 respectively—was initially rejected by the examining attorney on the grounds of “non-distinctive trade dress” and a “failure to function as a service mark”.

The Tribe requested reconsideration, which was rejected. The Tribe then appealed, which again was refused, despite providing further evidence of 11 third-party records for pending applications and registrations of design marks for buildings (which, incidentally, was deemed untimely as it was filed after appeal).

More back-and-forth occurred, with the examining attorney maintaining her argument that the building shape “is non-distinctive trade dress…and that “[b]ecause buildings come in a vast array of shapes and sizes, and are used to provide virtually all types of goods and services, consumers do not inherently perceive the exterior of an entire building as an immediate, inherent source indicator for the services provided inside the building.”

In short, the examining attorney maintained that the applied-for mark was not inherently distinctive, but accepted the Tribe’s claim of acquired distinctiveness in the alternative and ultimately concluded that the mark is inherently distinctive.

Change of tune

The TTAB’s eventual decision was reached once it changed focus, says Richter.

“The focus was always on the registrability of buildings—an approach the TTAB quickly dispensed of in its opinion,” she explains.

“US Supreme Court precedent is clear—buildings can be registered as trademarks if they meet the proper criteria (as in Two Pesos v Taco Cabana).

She explains that, as per the TTAB opinion, the Guitar Hotel design functions both as a source-identifying trademark and is decorative.

“That was the upshot of the opinion—that it was an inherently distinctive trademark which, by definition, cannot be functional and is therefore decorative,” she says.

But Lisa Ramsey, professor of law at the University of San Diego School of Law, is sceptical, disagreeing with the TTAB decision “for reasons of public policy”, though not for reasons of trademark doctrine.

“The TTAB held that building shapes like this can be deemed inherently distinctive strong marks under trademark law if they are unique in an industry,” she tells WIPR.

Instead, she asserts that building shapes should be treated like product designs and colours in trademark law “to better protect freedom of expression and fair competition”.

“Under this approach, proof of acquired distinctiveness would be required for registration and the trade dress would be deemed a conceptually weak mark in the infringement analysis.”

Scale of rights

Ramsey also believes that the scope of trademark rights should be narrow for these types of marks or trade dress, arguing that “stronger” marks’ scope of rights are often broader.

“Trademarks or trade dress with substantial pre-existing value (for example, a guitar shape or skull bottle shape, which is registered as a mark by Globefill) should either not be registered or protected as trademarks, or the scope of trademark rights in this subject matter should be narrow,” she says.

“Stronger marks often have a broader scope of protection. If a guitar-shaped building is deemed to be inherently distinctive, courts may enjoin use of an identical or similar building shape in connection with the sale of other goods or services (such as a guitar store or live music venue).

“Trademark laws do not require the parties' marks or products to be identical for infringement. Thus we cannot assume that the trademark registrant will only claim [that] its scope of trademark rights extends to casinos or hotel, restaurant, and bar services.

“A trademark registrant may be emboldened to threaten others with trademark infringement if its mark is deemed to be inherently distinctive.”

Strings attached

After Matal v Tam, 2017 and Iancu v Brunetti, 2019, Ramsey argues that the US government “must consider whether trademark laws chill expression”, adding that a trademark registration for a building shape may be invoked in a cease-or-desist letter or trademark complaint to stop the use of a similar building shape by competitors and non-competitors.

“I am concerned that granting trademark rights in building shapes like this will stifle the creative expression of architects and companies that hire them.

“As the government has decided to allow trademark registration and protection of building shapes, I think trademark laws will be more consistent with the right to freedom of expression if courts limit the scope of trademark rights in such marks to situations where the parties’ marks and products are identical or almost identical.”

But Richter counters this view. “Similar to copyrights, I believe that this [decision] encourages creativity,” she says. “There is nothing functional about the shape of the building and it actually was an engineering challenge.”

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