A Hotel Cannot Protect Its Building’s Exterior as a Trademark, but Maybe Yours Can
A recent precedential Trademark Trial and Appeal Board decision refused trademark protection for the Hilton Palacio del Rio hotel in San Antonio, Texas.
If you are not a trademark nerd, you might be incredulously asking, “You can protect a building as a trademark?” Well, a Supreme Court case in the early 1990s about whether trade dress of particulars composing “a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals” in a Mexican restaurant suggests a pretty broad scope of protection. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).
According to the USPTO docket, Palacio del Rio sought to register a relatively plain exterior. The USPTO’s Examining Attorney rejected the effort, arguing the exterior could not be inherently distinctive. So Palacio del Rio appealed to the Board. And it won on that issue, a building’s design can be inherently distinctive.
Unfortunately, Palacio del Rio still didn’t get protection because its building’s design was not inherently distinctive. There is a four-factor test to determine whether something is inherently distinctive. These Seabrook factors ask whether the mark is a common shape or design, whether the mark is unique or unusual in its field, whether the mark is no more than a small step in design from common forms of ornamentation, and whether the mark can create a commercial impression without the help of accompanying words.
Since the Palacio del Rio was nothing unique or special in the area of hotel design, the Board determined the design was not, in fact, inherently distinctive.
While Texas businesses again remind us trademark attorneys that building designs and restaurant layouts can be protectable, the Board’s opinion here suggests that it is a tough position to stake out.
In re Palacio del Rio, Inc., 2023 U.S.P.Q.2d 630 (T.T.A.B. 2023)
Jonathan L.A. Phillips, contact him at jphillips@bhslaw.com or 309 643 6518