Beams of Light Fail to Strike a Chord with the Board

The Guitar Hotel in Hollywood, Florida is a hotel in the shape of the body of a guitar, with six lit-up “strings” running vertically up the surface of the building. At 7 pm daily, the hotel conducts a music and light show choreographed to different songs. Part of this show includes projecting six beams of light from the top of the building, creating an LED version of strings on a guitar neck 20,000 feet into the sky. In a trade dress application, the hotel’s owner, the Seminole Tribe of Florida, claimed trade dress rights in those six vertical beams of light, representing the mark with the below drawing:

The mark is described as “six parallel, vertical beams of light representing guitar strings, extending 20,000 feet in the air from the top of a guitar-shaped building” but then says that “[t]he guitar-shaped building is not part of the mark and merely shows the placement of the mark.”

During examination, the Examining Attorney refused registration of the mark because (among other issues) they found that the mark is not an inherently distinctive source identifier and so it fails to function as a service mark for Applicant’s casino, hotel, and restaurant services. The Examining Attorney considered the trade dress to be product design, which requires secondary meaning to be registrable. In response, and on appeal, the Applicant claimed that the trade dress should instead be considered product packaging, which could be inherently distinctive, and function as a source indicator in the absence of secondary meaning.

However, the Board found that while the hotel may be considered “packaging” for the casino, hotel, and restaurant services rendered within, this particular mark, as defined by the Applicant, must be considered product design because it does not include the hotel.  The Board calls out the Applicant’s seemingly contradictory stance, that the beams of light are guitar strings that are so inherently distinctive as to be perceived by consumers as a source indicator for services, even in the absence of the guitar-shaped building. When the guitar-shaped building is removed from the equation, the Board points out that “the application is left with nothing but six beams of light shining skyward from an undefined structure.” And so—those six lonely beams of light fail to function as a trademark in the absence of secondary meaning.

Trademark owners should take note of the Examining Attorney’s and the Board’s analysis here. Before filing a trade dress application, Applicants should carefully consider how to describe their mark, and whether it might be appropriate for the trade dress to be framed as product packaging that may be inherently distinctive, and not as product design, which requires evidence of secondary meaning to be registrable. If a mark is found to be product design, the trademark owner will be required to prove that the mark has acquired secondary meaning, creating a high bar to overcome before the mark can be registered.