The Trademark Trial and Appeal Board (“TTAB”) recently reviewed whether the Seminole Tribe of Florida’s guitar-shaped building design was eligible for trademark protection with the United States Trademark Office. TTAB held in favor of the Seminole Tribe of Florida, finding that the guitar-shaped building design was inherently distinctive and able to proceed to registration without a claim of acquired distinctiveness (i.e., secondary meaning).
In deciding whether the guitar-shaped building design was eligible to receive trademark protection, TTAB looked to identify the design. Whether the design was product packaging, tertium quid, or product design would ultimately result in its protectability.
The guitar-shaped design was distinguished from the restaurant décor at issue in Two Pesos, which was more like product packaging or, as Justice Scalia termed, “tertium quid.” Because the Seminole Tribe’s trademark application consisted of a design, the analysis of Two Pesos wasn’t applicable. Next, TTAB turns to In re Chippendales. The Chippendales Court provided that, “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.” This test paved the way for pro-applicant results in many product design cases, which similarly led to the Seminole Tribe’s victory in receiving trademark protection for the guitar-shaped building design.
A guitar-shaped building is far from common and TTAB said it best, “there are no others” currently adopted as trade dress for a building. The design serves as an identifier in connection with the services the Seminole Tribe provides. This, in connection with the design’s true uniqueness, was enough for TTAB to find it worthy of trademark protection without an additional showing of secondary meaning. And although TTAB resorted to the perplex theory “tertium quid” to categorize The Seminole Tribe’s design, it is no mystery that this case marks an important spot in U.S. Trademark law, as TTAB continues to navigate the nuances of trade dress, design, packaging, and of course… tertium quid.
Authored by Ms. Haviland Macy Marie Kebler, Esq. and Ms. Rachel Petty Legal Clerk