Architects, owners and developers can benefit from understanding the role that intellectual property law plays in protecting architectural plans and building designs. Copyright law lends itself more to the types of protections that architects would tend to seek, while trademark law is generally more applicable to building or business owners. This article discusses trademark protection. The companion article discussing copyright protection is available here.
Trademarks can play a vital role in protecting architectural features in buildings, including the design of nonfunctional exterior and interior features, and the layout of a store or business. Trademark law may also be used to protect an architect’s “signature” style in the design of a building, though in narrow circumstances.
What Do Trademarks Protect?
The function and purpose of a trademark is to designate the origin of certain goods or services so that consumers are able to distinguish between similar products and services supplied from different sources. Simply put, the goodwill associated with a mark enables consumers to identify trusted sources of goods and services.
To facilitate this purpose, U.S. trademark law grants business owners the exclusive rights to “any word, name, symbol, or device, or any combination thereof” used by the business to identify and distinguish its goods and services from those manufactured or sold by others, and to indicate the source of the goods and services, even if that source is unknown. Almost any conceivable subject matter can become a trademark, ranging from words, personal names, trade names, symbols, devices, pictures, designs, numerals, monograms, abbreviations, acronyms to slogans, and phrases, to fragrances, colors, sound combinations, labels, containers, packaging, product shapes, telephone numbers, and grade designations, so long as the subject matter functions as a source identifier.
Trademarks in Buildings
In the construction industry, trademark law applies primarily to owners of buildings, and businesses that operate in buildings, embodying features that are protectable under trademark law.
The Trademark Manual of Examining Procedure (“TMEP”) provides that a three-dimensional configuration of a building may be registerable as a trademark, so long as it is “used in such as way that it is or could be perceived as a mark.” Examples of building trademark registrations include:
- Wrigley Building in Chicago (U.S. Trademark Registration No. 2,037,109 for use in connection with “social clubs; providing banquet and social function facilities for special occasions”);”
- Chrysler Building in New York (U.S. Trademark Registration No. 1,126,888 for use in connection with “leasing office space and attendant services to tenants”);
- Space Needle in Seattle (U.S. Trademark Registration No. 2,775,235 for use in connection with “restaurants and providing banquet facilities for special occasions”);
- Jack in the Box restaurants (U.S. Trademark Registration No. 3,012,352 for use in connection with “restaurant services”);
- Shake’s Frozen Custard (U.S. Trademark Registration No. 2,900,942 for use in connection with “restaurant services featuring frozen confections”); and
- Walgreen’s (U.S. Trademark Registration No. 3,008,035 for use in connection with “retail store services featuring general consumer merchandise.”)
Courts have also expressly recognized that a provider of goods and services may use the shape, color, and design of buildings and store fronts as source identifiers. The common law understanding of building trademarks has been recognized and discussed by the courts since as early as 1895 when a California court considered the case of Weinstock, Lubin & Co. v. Marks.
In that case, a competitor was prohibited from copying the unique building design and store front of another building because doing so would confuse customers. The plaintiff in Weinstock sold articles of clothing and dry goods at a place of business “of peculiar architecture…of which there was none other in the city of Sacramento.” The defendant, who sold similar articles, constructed a building adjoining the plaintiff that was similar in “every respect” to the architecture of the plaintiff’s building. The court found that the defendant, “by duplicating plaintiff’s building, with its peculiar architecture, and immediately adjoining, entering into the same line of business,” made n obvious attempt to trade on the plaintiff’s reputation, thereby infringing the plaintiff’s rights.
Another case recognizing the existence of building trademarks is White Tower System, Inc. v. White Castle System of Eating Houses Corporation, wherein the Sixth Circuit affirmed the district court’s finding that the plaintiff’s unique building design (consisting of a white structure designed like a miniature castle) was infringed by a junior user’s imitation. In White Castle, the defendant constructed a building similar in design to the plaintiff’s miniature castle to sell similar food products. The court determined that since the plaintiff’s castle hamburger stand was well known to the purchasing public in the trade territory and had acquired substantial goodwill, the defendant’s intentional copying of the building design was an encroachment on the plaintiff’s trademark rights.
It is well established that the exterior décor and overall impression of the exterior and interior of a business may be protectable trade dress. Trade dress is a form of trademark that involves the total image and impression of a business and may include features such as the shape and general appearance of the exterior of the restaurant, the identifying sign, the interior kitchen floor plan, the decor, the menu, the equipment used to serve food, the servers’ uniform and other features reflecting the total image of the restaurant.
The seminal trade dress case is Taco Cabana International, Inc. v. Two Pesos, Inc. In that case, Fifth Circuit found the plaintiff’s trade dress (Taco Cabana), consisting of “a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals …. [a] stepped exterior [comprised] of … a festive and vivid color scheme …. [and] bright awnings and umbrellas,” to be inherently distinctive and entitled to protection from the defendant’s imitation. In rendering its decision, the court explained that, although the competitor was free to use elements of the plaintiff’s trade dress, the plaintiff was able to protect against the competitor imitating a combination of visual elements that, taken together create the plaintiff’s distinct visual impression. The defendant’s imitation of the plaintiff’s distinctive integration of components constituted trade dress infringement in Two Pesos, a decision that was affirmed by the U.S. Supreme Court.
Architect’s Signature Style
In addition, an architect’s “signature style” of design may, in unique circumstances, be protected under trademark law. If an architect’s style of design is sufficiently distinctive of architectural design services, so that it functions as an indicator of source in the perception of the relevant consuming group, then the “signature” style arguably has become a trademark. Under these circumstances, trademark law would protect against the unauthorized reproduction of the distinctive aspects of the architect’s style, if reproduction creates a likelihood of confusion with the relevant consumer base.
What Is Not Protectable Under Trademark Law?
In order to function as a source identifier, a trademark must be capable of distinguishing the trademark owner’s goods and services from those of others. Accordingly, words, names, symbols, devices and features that are non-distinctive or functional are not protectable, because such matter is incapable of distinction.
To determine whether a trademark is distinctive, courts generally classify marks in one of five categories of increasing distinctiveness: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. Suggestive, arbitrary, and fanciful trademarks are protectable because they are inherently distinctive. Examples of these types of marks include:
- Suggestive: IGLOO for use in connection with ice chests is suggestive of the “cold” characteristic of ice chests;
- Arbitrary: APPLE for use in connection with computers and other electronics. The fruit shares no characteristics with computers, and has been arbitrarily applied to identify a source of electronics; and
- Fanciful: EXXON for use in connection with oil, gas and energy services. The mark was fabricated solely for the purpose of identifying the source of the company’s goods and services and does not otherwise exist in language.
In contrast, generic marks are unprotectable because they merely “refer to the genus of which the particular product is a species” and, as such, are incapable of providing distinctions between competing providers. An example would be a restaurant called, simply, RESTAURANT.
Lastly, descriptive marks are not inherently distinctive because they do not identify a particular source but, instead, merely describe the goods or services offered under the mark. For example, the mark SOUTHWEST PLUMBING, without more, fails to distinguish between multiple businesses providing plumbing services in the southwest portion of the country, or of a city. Descriptive marks may, however, acquire distinctiveness through a “secondary meaning” if the nature and extent of the mark’s use creates a perception of the mark as a source identifier in the minds of the relevant consuming public.
In the context of building designs, a building owner can show distinctiveness by proving either that the design is inherently distinctive or has acquired secondary meaning.80 For example, in The Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Productions, the court (although ultimately finding the building design failed to function as a trademark) determined that the plaintiff’s unique and innovative building design was inherently distinctive. On the other hand, the White Castle court found the plaintiff’s white structure designed like a miniature castle was sufficiently distinctive as a trademark based in part on the secondary meaning it had acquired in the collective mind of the relevant consumer base.
To be protectable under trademark law a mark must be nonfunctional. A product feature is functional and fails to serve as a trademark if “it is essential to the use or purpose of the article or affects the cost or quality of the article,” i.e., if exclusive use of the feature would put competitors at a significant disadvantage. The functionality doctrine seeks to prevent unfair competition by restricting a proprietor’s claim of exclusive rights to a product or service feature that is an important ingredient in the commercial success or aesthetic appeal of the product or service. Functionality might not bar a mark from becoming protectable, however, if the functional feature of the mark is not essential to the product’s use and does not affect its cost or quality.
In the case of architectural and building design trade dress, the courts look at how the building relates to the goods and services offered by the trade dress owner. Proponents of unregistered trade dress must show both that the architectural features are not essential to providing the service and that the design of the features does not affect the price or quality of the service.
Who Owns the Trademark?
Unlike a copyright, to acquire ownership of a trademark it is not enough to have created the mark first, or even to have registered it first. Instead, the party claiming ownership must have been the first to actually use the mark in commerce in connection with the sale of goods or services. Obtaining a federal registration for the mark is not a necessary condition of ownership, but a registration provides the mark owner with significant advantages.
What Rights Does a Trademark Owner Have?
Trademark law grants to the owner of a trademark the exclusive right to use its trademark in connection with the sale or offering of the particular type of goods and services provided by the owner. Accordingly, with respect to the shape, color, and design of a building or store front, the law grants to a trademark owner the right to exclude any third party from using a “reproduction, counterfeit, copy or colorable imitation” of the owner’s mark in interstate commerce in connection with the sale, or offering for sale, of goods and services where such use is likely to cause confusion among consumers.
This exclusive right is, however, tempered by the requirement that a trademark owner “show that it has actually used the [trademark] at issue as a trademark, and that the defendant has also used the same or similar designation as a trademark.” For example, in the Rock & Roll Hall of Fame case, the court found no likelihood of confusion because, although the building design qualified for trademark protection, neither the defendant nor the plaintiff utilized the design as a trademark. The court explained that the plaintiff’s disparate uses of several different perspectives of the building design failed to create the consistent and distinct commercial impression of a trademark. In addition, the court found that the defendant’s sale of a poster depicting the plaintiff’s building structure as a landmark failed to operate as a trademark. Because both the plaintiff and the defendant failed to utilize the building as a trademark, no cause of action existed for trademark infringement.
In sum, trademark law provides valuable protection for architects, owners, and developers. As general rule, copyright law lends itself more to the protections that architects would tend to seek, and trademark law is generally more applicable to building or business owners. Thanks also to Stephen Lewis for providing input and co-writing certain portions of this paper.