1301.02(c)    Three-Dimensional Trade Dress Service Marks

The three-dimensional trade dress configuration of a building is registrable as a service mark only if it is used in such a way that it is or could be perceived as a mark. See In re Seminole Tribe of Fla., 2023 USPQ2d 631, at *7-8 (TTAB 2023); In re Palacio Del Rio, Inc., 2023 USPQ2d 630, at *7-8 (TTAB 2023); In re Frankish Enters., 113 USPQ2d 1964, 1973 (TTAB 2015).  Evidence of use might include menus or letterhead that show promotion of the building’s design, or configuration, as a mark.  See, e.g., In re Seminole Tribe of Fla., 2023 USPQ2d 631, at *1-2; In re Frankish Enters., 113 USPQ2d at 1966-67; In re Lean-To Barbecue, Inc., 172 USPQ 151, 153 (TTAB 1971); In re Griffs of Am., Inc., 157 USPQ 592, 592-93 (TTAB 1968).

A three-dimensional costume design may function as a mark for entertainment services. See In re Red Robin Enters., 222 USPQ 911 (TTAB 1984).

However, the Board has held that a mark consisting of a three-dimensional cylindrical cast of female breasts and torso did not function as a mark for applicant’s association, charitable fundraising, and educational services in the field of breast cancer. In re Keep A Breast Found., 123 USPQ2d 1869, 1880 (TTAB 2017). The evidence indicated that the mark was being used as part of applicant’s services to assist women to make such casts. Thus, the cast would be perceived as part of the services, rather than as a mark designating the source of the services. Id. Further, the Board has held that a motion mark consisting of the live visual and motion elements of a guided bus tour in which an entertainer stops in view of the bus to perform a tap dance routine at a predetermined location did not function as a mark, because the evidence showed that the tap dance would be perceived as part of the bus tour services rather than a mark designating the source of the services. In re The Ride, LLC, 2020 USPQ2d 39644, at *10 (TTAB 2020).

Generally, a photograph is a proper specimen of use for a three-dimensional trade dress mark.  However, photographs of a building are not sufficient to show use of the building design as a mark for services performed in the building if they only show the building in which the services are performed.  The specimen must show that the proposed mark is used in a way that would be perceived as a mark. E.g., In re Seminole Tribe of Fla., 2023 USPQ2d 631, at *5-8 (specimen comprised an advertisement with a photograph showing the guitar-shaped building trade dress mark with text identifying the building as "the first-ever Guitar Hotel" and referencing the various services applicant provided); In re Frankish Enters. Ltd., 113 USPQ2d at 1966-67, 1973 (specimens comprised an advertisement of an exhibition poster with a photograph showing applicant’s monster truck design, as well as photographs of the monster truck while performing in exhibitions).

See 37 C.F.R. §2.52(b)(2)  and TMEP §807.10 regarding drawings of three-dimensional marks.

When examining a three-dimensional mark, the examining attorney must determine whether the proposed mark is inherently distinctive. See TMEP §1202.02(b)(ii). Trade dress for services, which is analogous to product packaging, can be inherently distinctive. See In re Palacio Del Rio, Inc., 2023 USPQ2d 630, at *5 ("[T]he [marks comprising] hotel building designs are akin to the packaging of what is being rendered and sold inside, namely, hotel services; thus constituting trade dress for the services."); In re Frankish Enters. Ltd., 113 USPQ2d at 1970 (citing In re Chippendales USA, Inc., 622 F.3d 1346, 1351, 96 USPQ2d 1681, 1684 (Fed. Cir. 2010)) (applicant’s mark comprising a "‘fanciful, prehistoric animal’ design [on its monster truck] is akin to the packaging of what is being sold, in this case [a]pplicant’s monster truck services"); see also In re Chippendales USA, Inc., 622 F.2d at 1351, 96 USPQ2d at 1684 (applicant’s mark comprising a "Cuffs & Collars [costume] worn by Chippendales dancers constitutes ‘trade dress’ because it is part of the ‘packaging’ of the product, which is ‘[a]dult entertainment services, namely exotic dancing for women’). A mark is inherently distinctive if "[its] intrinsic nature serves to identify a particular source." Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 210, 54 USPQ2d 1065, 1068 (2000) (quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 23 USPQ2d 1081, 1083 (1992)).

"In determining whether service mark trade dress is inherently distinctive, the ultimate focus is on whether a consumer will immediately rely on it as an indicator of source of origin, even if that source (provider) is unknown, and to differentiate the services from those of competing providers." In re Palacio Del Rio, Inc., 2023 USPQ2d 630, at *5 (citing In re Chippendales USA, Inc., 622 F.3d at 1352, 96 USPQ2d at 1685). The test for determining inherent distinctiveness set forth in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977) is applied to trade dress for services. See TMEP §1202.02(b)(ii). The examining attorney should consider the following Seabrook factors – whether the proposed mark is:

  • (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 services viewed by the public as a dress or ornamentation for the services; or
  • (4) capable of creating a commercial impression distinct from the accompanying words.

TMEP §1202.02(b)(ii); see, e.g., In re Chippendales USA, Inc., 622 F.3d at 1351, 96 USPQ2d at 1684; In re Seminole Tribe of Fla., 2023 USPQ2d 631, at *7; In re Palacio Del Rio, Inc., 2023 USPQ2d 630, at *5; In re Frankish Enters. Ltd., 113 USPQ2d at 1970; In re Chevron Intell. Prop. Grp. LLC, 96 USPQ2d 2026, 2027 (TTAB 2010); In re Brouwerij Bosteels, 96 USPQ2d 1414, 1421 (TTAB 2010); In re File, 48 USPQ2d 1363, 1365 (TTAB 1998); In re Hudson News Co., 39 USPQ2d 1915, 1922 (TTAB 1996), aff’d per curiam, 114 F.3d 1207 (Fed. Cir. 1997).

For §1(a), §44, and §66(a) applications for trade dress marks for services that are not inherently distinctive, based on the analysis of the Seabrook factors and supporting evidence, and for which acquired distinctiveness has not been established, registration must be refused according to the procedures in TMEP §1202.02(b)(ii). For a §1(b) application for such trade dress, unless the drawing, the description of the mark, and the examining attorney’s search results are dispositive of the lack of distinctiveness without the need to consider a specimen, these applications generally will not be refused registration until the applicant has filed an allegation of use in accordance with the procedures in TMEP §1202.02(b)(ii).

In certain cases, trade dress for services may be generic and incapable of functioning as an indicator of source. See TMEP §1202.02(b)(ii). In such case, the examining attorney must follow the procedures in TMEP §1202.02(b)(ii) for generic product packaging.