Trademark Protection for Buildings and Store Designs

By Hank FasthoffFebruary 26, 2017

Trademark law doesn't protect a building merely because its architecture is original, unusual, or recognizable. It protects words, symbols, designs, and trade dress that identify the source of goods or services. A building exterior, interior, or store layout may perform that function, but the owner must define the claimed features and establish the requirements for trademark protection.

Copyright asks a different question. It may protect original expression in architectural plans or a constructed architectural work even when consumers don't view the design as identifying a business. The article on copyright protection for architectural works addresses those rights and their statutory limits.

A Building May Function as Trade Dress for Services

Trade dress refers to the total image and overall appearance of a product, its packaging, or the setting in which services are provided. For a restaurant, hotel, retail store, or entertainment venue, the claimed trade dress may include a combination of exterior shape, interior layout, colors, signs, decor, fixtures, uniforms, menus, or service equipment.

The claim concerns the combination as perceived by consumers. Individual components may be common, functional, or available for competitors to use even when a particular arrangement functions as a source identifier. A claimant must identify the combination with enough precision for a court, the USPTO, and competitors to understand the asserted boundary.

The USPTO treats a three dimensional building configuration used for services as service trade dress. Its current examination guidance states that the configuration is registrable only when it is used in a way consumers could perceive as a mark. Menus, advertising, websites, signs, or letterhead may provide evidence when they promote the building design as an identifier for the services.

Distinctiveness Depends on Consumer Perception

Service trade dress may be inherently distinctive when its nature immediately identifies a source, even if consumers don't know the source's name. If the design isn't inherently distinctive, the owner must establish acquired distinctiveness. That showing asks whether consumers primarily understand the claimed design as identifying one source rather than merely as architecture, decoration, or the location where services are offered.

Two 2023 Trademark Trial and Appeal Board decisions illustrate the distinction. In In re Seminole Tribe of Florida, 2023 USPQ2d 631, at *7-8, the Board held that a three dimensional guitar shaped hotel building was inherently distinctive for the identified services.

In In re Palacio Del Rio, Inc., 2023 USPQ2d 630, at *5-14, the Board treated hotel building designs as service trade dress but found the claimed modular designs nondistinctive. Nearly 55 years of use didn't establish acquired distinctiveness because the evidence failed to show that consumers recognized the claimed designs as source identifiers. The Board also considered the common nature of the design elements, limited contextual support for sales and advertising figures, and the absence of advertising directing consumers to view the claimed features as a mark.

Length of use therefore doesn't resolve distinctiveness by itself. Relevant evidence may include consumer surveys, advertising focused on the claimed design, sales and market context, unsolicited media recognition, substantially exclusive use, licensing, and evidence that competitors intentionally copied the design to identify source.

Product Design and Service Trade Dress Follow Different Rules

Classification affects the distinctiveness standard. Under Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 212-16 (2000), product design can never be inherently distinctive and requires acquired distinctiveness. Product packaging and service trade dress may qualify as inherently distinctive.

A building used as the setting for hotel, restaurant, retail, or entertainment services may resemble packaging for those services. A building or structure sold as the product may instead present a product design question. When classification is uncertain, the applicant or claimant may have to establish acquired distinctiveness rather than rely on inherent distinctiveness.

Functional Features Can't Receive Trade Dress Protection

Trademark law doesn't permit perpetual control over functional design features. A feature is functional when it is essential to the use or purpose of the article or affects its cost or quality. Under TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29-35 (2001), a functional feature can't receive trade dress protection even after consumers associate it with one source.

Functionality may exclude structural supports, circulation requirements, safety features, access points, ventilation, lighting needed for performance, and other design choices dictated by operation or cost. Aesthetic functionality may also bar protection when exclusive control of a feature would place competitors at a significant disadvantage unrelated to reputation.

The analysis concerns the claimed design as a whole while accounting for the function of its components. An owner can't avoid the doctrine by combining several functional features and claiming the collection at a high level of generality. For unregistered trade dress, Section 43(a)(3) places the burden of establishing nonfunctionality on the party asserting protection.

The Application Must Define the Claimed Design

A three dimensional mark application requires a drawing that depicts the mark in a single rendition unless the USPTO grants a waiver. The Trademark Manual of Examining Procedure also requires the description to state that the mark is three dimensional. The specimen must show the same three dimensional feature used with the identified goods or services.

Solid lines ordinarily identify the features claimed as part of the mark. Broken or dotted lines may show the position of the mark or features excluded from the claim. The drawing, description, and specimen must work together, because an indefinite claim to the general appearance of a building won't identify the proposed mark with sufficient precision.

Registration doesn't establish rights in every photograph, perspective, or architectural feature associated with the property. The registered drawing and description define the claimed mark, while the listed goods or services define its commercial context. Marketplace use must maintain a consistent commercial impression if the owner intends to rely on the design as a source identifier.

Architectural Authorship Doesn't Establish Trademark Ownership

An architect may own copyright in plans or a building design without owning the trademark rights arising from the building's use. Trademark ownership ordinarily concerns the business that uses the claimed design to identify its goods or services and controls the goodwill associated with that use.

Development agreements, architectural services agreements, leases, franchise agreements, and licenses may divide copyright, trademark, publicity, and merchandising rights among different parties. A contract may need to address who may use depictions of the building as a mark, apply for registrations, license merchandise, approve alterations, and enforce the rights. Acquiring the physical property doesn't by itself transfer every intellectual property right associated with its design.

When another party may use the building trade dress under license, the trademark owner must maintain appropriate quality control. An uncontrolled license may impair the trademark rights even when the written agreement calls the transaction a license.

Copying Architecture Isn't Enough for Infringement

A trade dress claim requires source identifying use and likely consumer confusion. Deliberate copying may support an inference about intent or consumer perception, but copying alone doesn't establish that the claimant owns protectable trade dress or that the defendant used the design as a mark.

In Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764-76 (1992), the Supreme Court upheld protection for inherently distinctive restaurant trade dress without requiring secondary meaning. The claimed combination included the restaurant's exterior, signs, interior layout, decor, menu, service equipment, and employee uniforms. The decision concerned the integrated commercial appearance rather than exclusive rights in every individual component.

Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Productions, 134 F.3d 749, 753-55 (6th Cir. 1998), demonstrates the source identification requirement. The Sixth Circuit vacated a preliminary injunction against a photographer who sold a poster depicting the museum. The record didn't establish a consistent use of the building design as a mark or consumer recognition of the various depictions as identifying a single source of merchandise. Recognition of a landmark wasn't equivalent to recognition of its image as a trademark.

A photograph, illustration, news report, commentary, or truthful identification of a building doesn't necessarily use its design as a source identifier. The context, presentation, accompanying words, goods or services, and likely consumer understanding determine whether the challenged use creates the required confusion about source, sponsorship, affiliation, or approval.

Enforcement Begins With a Defined Claim

Before asserting building trade dress, the owner should identify the claimed features, separate functional elements, collect specimens showing use as a mark, and assemble evidence of consumer recognition. The review should also address ownership, continuous use, third party designs, licensing controls, and the difference between recognition of the building and recognition of the design as a source identifier.

The same record supports registration and enforcement decisions. A precise claim may protect a distinctive commercial presentation without attempting to control architectural ideas, common design elements, functional construction, or ordinary depictions of a landmark.

Stephen Lewis provided input and wrote portions of the original article.