Seminole Tribe of Florida

This Opinion is a

Precedent of the TTAB

Hearing: September 15, 2022 Mailed: May 25, 2023

UNITED STATES PATENT AND TRADEMARK OFFICE

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Trademark Trial and Appeal Board

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In re Seminole Tribe of Florida

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Serial No. 87890892

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Miriam Richter of Richter Trademarks, P.L., for the Seminole Tribe of Florida.

Kathleen M. Schwarz, Trademark Examining Attorney, Law Office 123,

Kathy de Jonge, Trademark Examining Attorney, Law Office 107 (on brief),

J. Leslie Bishop, Managing Attorney, Law Office 107.

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Before Taylor, Greenbaum, and Johnson,

Administrative Trademark Judges.

Opinion by Johnson, Administrative Trademark Judge:

The Seminole Tribe of Florida (“Applicant”) seeks registration on the Principal

Register of the proposed mark shown below (“Applicant’s Mark” or “Guitar Design”)1

1 Application Serial No. 87890892 was filed on April 24, 2018 under Section 1(b) of the

Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intent to

use the mark in commerce. Thereafter, Applicant filed an Amendment to Allege Use of the

mark in International Classes 41 and 43 based upon Applicant’s claim of first use anywhere

and first use in commerce since at least as early as October 24, 2019.

Citations to the appeal record are from the publicly available documents in TTABVUE, the

Board’s electronic docketing system. See, e.g., Turdin v. Trilobite, Ltd., 109 USPQ2d 1473,

1476 n.6 (TTAB 2014). The number preceding “TTABVUE” corresponds to the docket entry

Serial No. 87890892

for “Casinos,” in International Class 41, and “Hotel, restaurant, and bar services,” in

International Class 43 (collectively, “Applicant’s Services”). The mark is described as

follows: “The mark consists of trade dress consisting of a three-dimensional building

in the shape of a guitar.” Color is not claimed as a feature of the mark.

number; the number(s) following “TTABVUE” refer to the page number(s) of that particular

docket entry, if applicable. All citations to prosecution history documents contained in the

Trademark Status and Document Retrieval (TSDR) database are to the downloadable .pdf

versions of the documents.

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Serial No. 87890892

The Examining Attorney refused registration of the mark on the ground that it is

nondistinctive trade dress under Sections 1, 2, 3, and 45 of the Trademark Act,

15 U.S.C. §§ 1051, 1052, 1053, and 1127, and on a separate ground of failure to

function as a service mark.2 Applicant then requested reconsideration, arguing in the

alternative that its mark had acquired distinctiveness under Section 2(f) of the

Trademark Act, 15 U.S.C. § 1052(f), and presenting evidence in support of its claim.3

The Examining Attorney denied the request for reconsideration, maintaining the

refusals and concluding that Applicant had not properly asserted a claim of acquired

distinctiveness in the alternative.4

Applicant then filed its Appeal Brief, including an embedded request that “[a]t a

minimum … the Board should vacate the refusal of the application and remand this

matter for a proper evaluation of the configuration’s inherent distinctiveness and, in

the alternative, for consideration of Applicant’s showing of secondary meaning under

Section 2(f).”5 (Applicant’s Brief, 7 TTABVUE 18). The Examining Attorney

2 Jan. 7, 2019 Final Office Action at 4-6.

3 July 5, 2019 Request for Reconsideration after Final Action (“RFR”) at 7-13 (“[S]hould the

mark not proceed to registration based on inherent distinctiveness, and after the exhaustion

of all appeals, Applicant wishes to introduce evidence of acquired distinctiveness.”).

4 Aug. 26, 2019 Subsequent Final Office Action – Request for Reconsideration Denied at 4;

5 TTABVUE 4.

5 Applicant’s embedded request that the Board “vacate the refusal” and remand this case for

reconsideration of Applicant’s acquired distinctiveness claim in the alternative,

see 7 TTABVUE 18, is improper. See also In re Adlon Brand Gmbh & Co. KG, 120 USPQ2d

1717, 1725 (TTAB 2016) (applicant’s request for remand, included in applicant’s brief, denied,

explaining that proper procedure “was to file with the Board, after the filing of the appeal

but before briefing, a request for remand with a showing of good cause.”); cf. TRADEMARK

TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1205.01 (2022) (proper

procedure is to file a separately captioned request for remand because requests embedded in

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subsequently filed a request to remand the application solely to address Applicant’s

alternative claim of acquired distinctiveness,6 which was objected to by Applicant.7

The Board granted the request, restored jurisdiction to the Examining Attorney and

suspended the appeal. (12 TTABVUE).

The Examining Attorney then issued an Office Action which maintained and

continued the final refusals on both the grounds of failure to function and

nondistinctive trade dress.8 In addition, the Examining Attorney found Applicant’s

alternative acquired distinctiveness claim and supporting evidence insufficient in

light of the intent-to-use application status, but allowed Applicant time to file

additional evidence in support of its claim.9 Applicant promptly filed an amendment

to allege use with a specimen, shown below,10 and renewed its claim of acquired

an appeal brief may not be noted by the Board). The purpose of requiring a separately filed

request is to bring the request to the Board’s attention in a timely manner before the briefs

are filed. If warranted, Applicant should have requested, in a separate filing, remand of the

case for consideration of additional evidence to support its claims. In any event, the

application was remanded to the Examining Attorney, at her request, for consideration of

Applicant’s evidence of acquired distinctiveness.

6 Jan. 15, 2020 Request for Remand at 1; 10 TTABVUE.

7 In its response in opposition to the Examining Attorney’s Request for Remand, Applicant

argues that it “has been very clear that its request for a registration based on Section 2(f)

was made in the alternative and only ‘after the exhaustion of all appeals’ related to inherent

distinctiveness … . Further … Applicant has not waived, and will not waive, its option to

appeal the refusal of inherent distinctiveness, nor has it amended its application to Section

2(f).” Applicant’s Objection to the Motion to Remand and Objection to Suspension of the

Appeal during further Examination, 11 TTABVUE 3.

8 Mar. 25, 2020 Office Action at 3.

9 Id. at 2-3.

10 Sept. 16, 2020 Amendment to Allege Use and specimen.

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Serial No. 87890892

distinctiveness in the alternative in a subsequent office action response, which

included additional supporting evidence.11

12

After further consideration, the Examining Attorney maintained the refusal to

register Applicant’s Mark on the ground that it is nondistinctive trade dress,

reasoning that “[b]ecause buildings come in a vast array of shapes and sizes, and are

11 Sept. 24, 2020 Response to Office Action (“ROA”) at 1-21.

12 Sept. 16, 2020 Specimen at 1 (cropped image from https://www.theseminolecasinos.com).

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Serial No. 87890892

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.”13 However, as to Applicant’s claim of

acquired distinctiveness in the alternative, the Examining Attorney stated “[t]he §2(f)

evidence is deemed acceptable and [acquired distinctiveness] will not be an issue on

appeal.”14

In her Appeal Brief, the Examining Attorney maintains that Applicant’s Mark is

not inherently distinctive, but accepts Applicant’s claim of acquired distinctiveness

in the alternative. (16 TTABVUE 8, 14). At the hearing, Applicant’s counsel argued

that Applicant’s Mark is inherently distinctive. Since the Office has accepted

Applicant’s claim of acquired distinctiveness in the alternative, we address the final

refusal solely on the ground that Applicant’s Mark is not inherently distinctive. We

reverse the refusal to register.

I. Evidentiary Issue

Before turning to the merits of the appeal, we address an evidentiary issue.

Applicant attached to its Appeal Brief eleven third-party records for pending

applications and registrations of design marks for buildings that are not included in

13 Oct. 8, 2021 Final Office Action at 2. The October 8, 2021 Final Office Action was the

second, and last, final office action; no subsequent office action issued. The Examining

Attorney did not specifically maintain or discuss the separate failure to function refusal in

the October 8, 2021 Final Office Action, so that refusal is forfeited. See TRADEMARK MANUAL

OF EXAMINING PROCEDURE (TMEP) § 714.04 (July 2022) (“When making an action final, the

examining attorney must restate any substantive refusals or requirements that remain

outstanding, and must cite the rule(s) and/or statute(s) that provide the basis for these

refusals or requirements.”).

14 Oct. 8, 2021 Final Office Action at 2.

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the prosecution record (7 TTABVUE 20-39), and now requests that we take judicial

notice of them. (7 TTABVUE 13 n. 2). The Examining Attorney objects to any

consideration of this evidence, as it is untimely and because the Board does not take

judicial notice of Office records. (16 TTABVUE 7).

Generally, “[t]he record in the application should be complete prior to the filing of

an appeal. Evidence should not be filed with the Board after the filing of a notice of

appeal.” Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); see also TBMP § 1203.02(e)

(“Exhibits attached to a brief that were not made of record during examination are

untimely, and generally will not be considered.”); TBMP §§ 1203.01, 1207.01.

Applicant provided no reason for an exception to this general rule, and we find no

reason to deviate from established practice. Therefore, the evidence of third-party

applications and registrations is untimely.

In addition, “[t]he Board’s well-established practice is not to take judicial notice of

third-party [applications and] registrations when an applicant or examining attorney

requests that such notice be taken during the course of an appeal.” TBMP § 1208.04;

see also In re House Beer, LLC, 114 USPQ2d 1073, 1075 (TTAB 2015) (Board does not

take judicial notice of files of applications or registrations residing in the Office,

including entries in file of cited registration). Again, Applicant did not explain why

we should deviate from this general rule, and we decline to do so.15

15To make the third-party applications and registrations of record, Applicant could and

should have filed a separately captioned request for remand, including a showing of good

cause, with the evidence attached. TBMP §§ 1207.02, 1209.04; see also In re Ox Paperboard,

LLC, 2020 USPQ2d 10878, at *3-5 (TTAB 2020); In re Adlon Brand, 120 USPQ2d at 1725.

Moreover, the cancelled registrations among the nine are not evidence of anything except

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Accordingly, we sustain the objection. We will not consider further any of the

eleven records Applicant attached to its Appeal Brief.

II. Applicant’s Mark and Inherent Distinctiveness

Section 45 of the Trademark Act defines a “service mark,” in relevant part, as “any

word, name, symbol, or device, or any combination thereof used by a person . . . to

identify and distinguish the services of one person, including a unique service, from

the services of others and to indicate the source of the services, even if the source is

unknown.” 15 U.S.C. § 1127. “The critical inquiry in determining whether a

designation functions as a mark is how the designation would be perceived by the

relevant public.” In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010). “[A]

mark is inherently distinctive if ‘[its] intrinsic nature serves to identify a particular

source.’” Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065,

1068 (2000) (“Samara Bros.”) (quoting Two Pesos, Inc. v. Taco Cabana, Inc.,

505 U.S. 763, 23 USPQ2d 1081, 1083 (1992) (“Two Pesos”)).

that the registrations issued; they are not evidence of any presently existing rights in the

marks shown in the registration, nor are they evidence that the marks were ever used. Action

Temp. Servs. v. Labor Force, Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989);

A&H Sportswear Co. v. Yedor, 2019 USPQ2d 111513, at *5 n.4 (TTAB 2019) (“a cancelled

registration is not entitled to any of the statutory presumptions of Section 7(b) of the

Trademark Act”); Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1606 (TTAB 2018) (a

cancelled registration is only evidence that the registration issued, and is not evidence of use

of the mark at any time). With respect to the two application records, third-party applications

are evidence only of the fact that they have been filed, In re Toshiba Med. Sys. Corp.,

91 USPQ2d 1266, 1270 n.8 (TTAB 2009), and have no other probative value. Interpayment

Servs. Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003).

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A. Inherent Distinctiveness and Trade Dress: Supreme Court Case Law

Throughout the briefs and during oral argument, Applicant and the Examining

Attorney discussed, at length, the applicability of two United States Supreme Court

decisions focusing on whether trade dress can be inherently distinctive: Two Pesos

and Samara Bros. We summarize the pertinent portions of each case below.

1. Two Pesos, Inc. v. Taco Cabana, Inc.

Throughout the late 1970s and 1980s, Taco Cabana, Inc. operated a chain of fast-

food restaurants that served Mexican cuisine in the San Antonio, Houston, Austin,

Dallas, and El Paso, Texas areas. In trade dress infringement litigation against Two

Pesos, Inc., which operated Mexican restaurants with a similar motif in the cities of

Houston, Dallas, and El Paso, Taco Cabana described the trade dress featured at its

restaurants 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.

Two Pesos, 23 USPQ2d at 1082.

At trial, the jury returned a verdict finding that Taco Cabana’s trade dress was

nonfunctional and inherently distinctive, but “[had] not acquired a secondary

meaning.” 23 USPQ2d at 1082. On appeal, the U.S. Court of Appeals for the Fifth

Circuit held that the law and evidence supported the jury’s findings, and that under

Fifth Circuit precedent, “trademark law requires a demonstration of [acquired

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distinctiveness] only when the claimed trademark is not sufficiently distinctive of

itself to identify the producer … [and] that the same principles should apply to

protection of trade dresses.” 23 USPQ2d at 1083. The U.S. Supreme Court affirmed

the circuit court, holding 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….” 23 USPQ2d at 1086. Overall, at trial and on appeal, Taco

Cabana’s restaurant trade dress, as described, was found to be inherently distinctive,

and therefore registrable without a showing of acquired distinctiveness.

2. Wal-Mart Stores v. Samara Bros.

Eight years later, in Samara Bros., the Supreme Court opined further about trade

dress, distinguishing “product design” trade dress from “product packaging” trade

dress. In that case, Samara Brothers, Inc., a designer and manufacturer of children’s

clothing, sued Wal-Mart for selling knockoffs of Samara Brothers’ garments,

specifically, a line of spring and summer one-piece seersucker outfits featuring

“appliques [sic] of hearts, flowers, fruits, and the like.” 54 USPQ2d at 1066.

The Court, finding that the seersucker outfits sold by Samara Brothers

constituted “product design” trade dress, held that “in an action for infringement of

unregistered trade dress under § 43(a) of the Lanham Act, a product’s design is

distinctive, and therefore protectible, only upon a showing of secondary meaning.”

54 USPQ2d at 1070. Justice Scalia, writing for a unanimous Court, distinguished the

“product packaging” trade dress, or “tertium quid,” at issue in Two Pesos, from the

“product design” trade dress at issue in Samara Bros.

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Two Pesos unquestionably establishes the legal principle

that trade dress can be inherently distinctive, … but it

does not establish that product-design trade dress can be.

Two Pesos is inapposite to our holding here because

the trade dress at issue [in Two Pesos], the décor of

a restaurant, seems to us not to constitute product

design. It was either product packaging — which, as

we have discussed, normally is taken by the

consumer to indicate origin — or else some tertium

quid that is akin to product packaging and has no

bearing on the present case.

54 USPQ2d at 1069 (citations omitted) (italics in original; emphasis added). Justice

Scalia further elucidated the difference between “product packaging” trade dress and

“product design” trade dress as follows:

It seems to us that [product] 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 encasing it in a distinctive

packaging, is most often to identify the source of the

product. Although the words and packaging can

serve subsidiary functions … their predominant

function remains source identification. Consumers

are therefore predisposed to regard those symbols

as indication of the producer, which is why such

symbols “almost automatically tell a customer that

they refer to a brand,” … and “immediately … signal

a brand or a product source. And where it is not

reasonable to assume consumer predisposition to take an

affixed word or packaging as indication of source — where,

for example, the affixed word is descriptive of the product

(“Tasty” bread) or of a geographic origin (“Georgia”

peaches) — inherent distinctiveness will not be found.

…

In the case of product design, as in the case of color, we

think consumer predisposition to equate the feature with

the source does not exist. Consumers are aware of the

reality that, almost invariably, even the most unusual of

product designs — such as a cocktail shaker shaped like a

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penguin — is intended not to identify the source, but to

render the product itself more useful or more appealing.

54 USPQ2d at 1069 (citations omitted) (italics in original; emphasis added).

Finally, in “close cases,” where courts will be forced to “draw difficult lines between

product-design and product-packaging trade dress,” Justice Scalia stated that “courts

should err on the side of caution and classify ambiguous trade dress as product

design, thereby requiring secondary meaning.” 54 USPQ2d at 1070.

B. Applicant’s Guitar Design Mark Is Inherently Distinctive for

Applicant’s Services

Applicant contends that its mark is akin to product packaging and not product

design: “The Application is for services, and the building is the ‘package’ in which the

services are delivered to consumers. That the building was ‘designed’ … does not

make it a ‘product design’ … .” (7 TTABVUE 18). In support, Applicant argues that

the Board already “confirmed the ability of a building’s façade alone to function as a

trademark” in the nonprecedential Board decision In re Furniture Mart Holdings I,

LLC, 2012 WL 4361420 (TTAB Sept. 12, 2012) (“Furniture Mart I”).16

(7 TTABVUE 18). Applicant also included in the record nineteen third-party

16 An opinion designated as not precedential is not binding upon the Board, but may be cited

for whatever persuasive value it might have. TBMP §§ 101.03, 1203.02(f). Generally, the

practice of citing non-precedential opinions is not encouraged. In re Morrison & Foerster LLP,

110 USPQ2d 1423, 1427 n.6 (TTAB 2014); In re the Procter & Gamble Co., 105 USPQ2d 1119,

1120-21 (TTAB 2012). More importantly, we find that Furniture Mart I has no persuasive

value here, because it turned on the failure of the examining attorney to make a prima facie

showing that the building design sought to be registered was not inherently distinctive.

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registrations of building configurations or building designs from the TSDR database,

one of which is cancelled, that issued without claims of acquired distinctiveness.17

The Examining Attorney contends that Applicant’s Mark is not inherently

distinctive product packaging, but is nondistinctive, ambiguous trade dress (similar

to that discussed in Samara Bros.), and therefore, acquired distinctiveness is

required before registration can be granted. (16 TTABVUE 13). The Examining

Attorney particularly argues that “[w]hen used with services, trade dress typically

consists of three-dimensional matter or visual elements that form or otherwise affect

the ‘packaging’ of the services, i.e., the image or appearance of the location where, or

the means by which, the services are performed,” (16 TTABVUE 9), but that

Applicant’s Mark “is not inherently distinctive because it is a mere refinement of the

exterior of a building.” (16 TTABVUE 11). In other words, consumers would recognize

the features of Applicant’s building as “basic, common elements” that are common to

17 Nov. 7, 2018 ROA at 92-1779 (Reg. Nos. 1865062, 1865063, 1865064, 1865065, 2775235,

2773451, 2280290, 4864166, 2295898, 5457612, 2263968, 3917411, 3917413, 3917412,

5193737, 5426520, 1970427, 3830869, and 4765905). Reg. No. 4765905 is cancelled, and

accordingly, has no probative value. We are unpersuaded by Applicant’s third-party

registration evidence. We must consider the eligibility for registration of Applicant’s Mark

for the identified services based on the record in this case. See In re Cordua Rests., Inc.,

823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (“The PTO is required to examine all

trademark applications for compliance with each and every eligibility requirement.…”);

In re Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009)

(“Applicant’s allegations regarding similar marks are irrelevant because each application

must be considered on its own merits.”); In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d

1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics

similar to [the instant] … application, the [US]PTO’s allowance of such prior registrations

does not bind the Board … .”). Each case is decided on its own facts, and each mark stands

on its own merits. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10

(TTAB 2017) (quoting In re Boulevard Entm’t, 334 F.3d 1336, 67 USPQ2d 1475, 1480

(Fed. Cir. 2003)).

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all buildings, not as indicators of source. (16 TTABVUE 11). The Examining Attorney

further argues that Applicant’s Mark “would not be inherently perceived as a source

indicator for the identified services because the purpose of a building is other than to

indicate source.” (16 TTABVUE 11; see also 16 TTABVUE 12 (“inherent purpose of a

building is to provide shelter, not to indicate source”)).

We appreciate that buildings come in all shapes and sizes and have common

elements, as demonstrated by the evidence of record,18 but we decline to adopt either

the Examining Attorney’s argument or Applicant’s argument. Instead of focusing on

decisions only involving the trade dress of buildings and the services rendered in

those buildings, we also find pertinent decisions that analyze the inherent

distinctiveness of trade dress used with a variety of services. Cf. In re Berkeley Lights,

Inc., 2022 USPQ2d 1000, at *18-21 (TTAB 2022) (Board may rely on “a different

rationale” unless it “rises to the level of a new ground for refusal”); In re Peace Love

World Live, LLC, 127 USPQ2d 1400, 1401-02 (TTAB 2018) (Board exercised

discretion to limit its review of failure to function refusal to whether I LOVE YOU

was merely ornamental); In re Avocet, Inc., 227 USPQ 566, 567 (TTAB 1985) (Board

need not adopt arguments of applicant or examining attorney “in every respect” in

order to render a decision on appeal); see also TBMP § 1217.

For example, in a decision evaluating the distinctiveness of the “Cuffs & Collar”

trade dress worn by the Chippendales dancers, the Office asserted a somewhat

analogous argument to the one it asserts here, focusing on the presumed similarity

18 See May 7, 2018 Office Action at 6-14; Jan. 7, 2019 Office Action at 12-79.

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Serial No. 87890892

of attire worn by exotic dancers: Specifically, the “Chippendales’ mark [was] not

inherently distinctive simply because exotic dancers [were] expected to wear

revealing attire.” In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681,

1688 (Fed. Cir. 2010). Although the Federal Circuit affirmed the Board’s ultimate

conclusion finding the “Cuffs & Collar” trade dress not inherently distinctive in the

exotic dancing field “because it was inspired by the ubiquitous Playboy bunny suit,”

id. at 1683, the court also found that “the Board erred in suggesting that any costume

in the context of the adult entertainment industry would lack inherent

distinctiveness … .” Id. (emphasis added). The court opined further that an inherent

distinctiveness inquiry, as applied to trade dress, does not depend on actual consumer

identification of a particular trade dress with a particular business:

Inherent distinctiveness [of trade dress] does not depend

on a showing that consumers actually identify the

particular mark with the particular business; this is a

question of acquired distinctiveness, or secondary

meaning. As we elaborated in Tone Brothers, Inc. v. Sysco

Corp., 28 F.3d 1192 [31 USPQ2d 1321] (Fed. Cir. 1994),

ultimately “the focus of the [inherent

distinctiveness] inquiry is whether or not the trade

dress is of such a design that a buyer will

immediately rely on it to differentiate the product

from those of competing manufacturers; if so, it is

inherently distinctive.” Id. at 1206 (citing Paddington

Corp. v. Attiki Imps. & Distribs., Inc., 996 F.2d 577, 582-84

[27 USPQ2d 1189, 1191-94] (2d Cir. 1993)). Thus, if the

mark is inherently distinctive, it is presumed that

consumers will view it as a source identifier. If the mark

is not inherently distinctive, it is unfair to others in

the industry to allow what is in essence in the public

domain to be registered and appropriated, absent a

showing of secondary meaning. The policy here is

basically the same as the prohibition against registering

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Serial No. 87890892

generic word marks, or descriptive marks that have not

acquired secondary meaning.

In re Chippendales USA, 96 USPQ2d at 1685 (italics in original; emphasis added).

In re Chippendales USA, which was decided after both Two Pesos and Samara

Bros., indicates that it is appropriate for us to consider whether a consumer would

immediately rely on Applicant’s Guitar Design mark to differentiate Applicant’s

Services from the services of others who offer casinos or hotel, restaurant, and bar

services, as well as to consider the entire trade dress of Applicant’s Guitar Design

mark as shown and described above. In re Chippendales USA, however, does not

require us to consider the general purpose of the building to which the trade dress is

applied.

In re Chippendales USA set the stage for the Board to find the “fanciful,

prehistoric animal design” of the cab of a monster truck, used to compete in monster

truck exhibitions, akin to product packaging for an applicant’s monster truck

services, and therefore, inherently distinctive. In re Frankish Enters. Ltd.,

113 USPQ2d 1964, 1970 (TTAB 2015). Of particular importance to the Board in

In re Frankish Enterprises was the uniqueness of the applicant’s monster truck

design, which was readily distinguishable from all other monster truck designs of

record:

Here, the evidence made of record by the Examining

Attorney fails to show that Applicant’s “fanciful,

prehistoric animal” design is either a common or a basic

shape or design. Rather, it is unique among the more than

100 monster trucks depicted in the Examining Attorney’s

image search results. To the extent that two of the monster

trucks among those results have certain characteristics in

common with Applicant’s mark, they are nevertheless

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readily distinguishable from Applicant’s unique design

which includes peculiar horns, scales, a protective shield

and other features which neither Swamp Thing nor the

“Raptors” monster trucks share. Indeed, Applicant’s

monster truck is “unique” and “unusual” in the

monster truck field. The Examining Attorney

provided scant, if any, evidence that Applicant’s

truck is a “mere refinement” of anything, let alone a

“commonly-adopted” and “well-known form” in the

monster truck field. To the contrary, the totality of

the record makes clear that Applicant’s truck stands

alone in the quality and quantity of its distinctive

traits which set it apart from the other monster

trucks about which the Examining Attorney

submitted evidence … .

113 USPQ2d at 1971 (emphasis added).

We find, on the record in this case and under the guidance of Two Pesos, Samara

Bros., and In re Chippendales USA, that Applicant’s Guitar Design is “tertium quid”

that is akin to product packaging, and that Applicant’s Guitar Design is inherently

distinctive for Applicant’s Services. In making this finding, we apply the Board’s

reasoning in In re Frankish Enterprises, which as highlighted above, focused on the

uniqueness of the trade dress at issue in the relevant industry. See also In re Eagle

Fence Rentals, Inc., 231 USPQ 228 (TTAB 1986) (“alternately colored strands of wire

arranged vertically in fencing” for renting chain link fencing found inherently

distinctive; refusal reversed); In re Red Robin Enters., Inc., 222 USPQ 911

(TTAB 1984) (particular design of applicant’s bird costume found inherently

distinctive for “entertainment services, namely, personal appearances, clowning,

antics, dance routines, and charity benefits”; refusal reversed).

Our finding is further supported by the long-standing test to determine whether

trade dress is inherently distinctive, articulated in Seabrook Foods, Inc. v. Bar-Well

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Serial No. 87890892

Foods, Ltd., 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977): whether the trade dress

is a “common” basic shape or design; whether it is unique or unusual in a particular

field; or whether it is 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.19

Applicant seeks registration of its trade dress for its casinos and hotel, restaurant,

and bar services, but the record in this case lacks any evidence demonstrating that a

building designed in the shape of a guitar, shown again below, is a common design

through which casinos, or hotel, restaurant, and bar services are offered. See

In re Frankish Enters., 113 USPQ2d at 1971. Indeed, the record is devoid of any

evidence showing that anyone in the United States other than Applicant has adopted

a “guitar design” trade dress for a building — there are no others. Cf. id. (“the totality

of the record makes clear that Applicant’s truck stands alone in the quality and

quantity of its distinctive traits which set it apart from the other monster trucks

about which the Examining Attorney submitted evidence … .”).

19 Here, as in In re Chippendales USA, under our facts ― i.e., a mark with no textual elements

― “[t]he fourth factor, whether the trade dress was capable of creating a commercial

impression distinct from the accompanying words, is not applicable. …” 96 USPQ2d at 1684

(“If a mark satisfies any of the first three tests, it is not inherently distinctive.”).

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Serial No. 87890892

20

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.

20 Sept. 16, 2020 Specimen at 1 (cropped image from https://www.theseminolecasinos.com).

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Serial No. 87890892

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.21

Decision: The refusal to register on the ground that Applicant’s Mark is not

inherently distinctive is reversed.

21 As previously discussed, the Office has already accepted Applicant’s alternative 2(f) claim,

based on the evidence Applicant proffered during prosecution. This decision renders that

acceptance moot.

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