William Tennant

Using an historic symbol, like the Texas Star, as a trade or service mark can lead to unintended consequences when your competitor decides to use a similar symbol.  In the case of Amazing Spaces, Inc. v. Metro Mini Storage, the United States Court of Appeals Fifth Circuit held that the registered service mark symbol used by Amazing was not entitled to protection.   Amazing was granted a federal registration for the mark on July 6, 2004 using the mark in conjunction with its mini-storage facility business.  The mark was stylized from a traditional Texas 5-point star.  Metro, which contracted the same facility builder, also included a similar version of the mark on its buildings.  Although a statutory presumption of validity is accorded to marks registered under the Lanham Act, this presumption is rebuttable and may be overcome by establishing the generic or descriptive nature of the mark.

Amazing sued for infringement.  It cited the distinctive nature of its mark and the federal registration.  It failed though to provide evidence the mark had acquired secondary meaning.  In fact, Metro produced evidence that 63 other businesses used a similar mark.  Metro was awarded a summary judgment in the federal district court and Amazing appealed the decision.  The Appeals Court noted that a different standard applied in analyzing a symbol versus a word mark.  Using the Seabrook Foods test, it considered whether Texas 5-star mark was a “common” basic shape or design, whether it was unique or unusual in any particular field, whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods, or whether it was capable of creating a commercial impression distinct from the accompanying words.  It concluded the mark to be merely ornamental in nature and not a source identifier of Amazing’s services.  Further, the mark lacked the distinctiveness necessary to provide the source identification of a registered mark absent evidence of secondary meaning.  Therefore, the presumption of validity was overcome and the mark was ordered cancelled from the PTO registry.

Using the common logos and historic symbols widely used by others can be risky for brand development.   The lack of distinctiveness coupled with the potential for descriptive or ornamental interpretation constitutes a viable threat to the goods and services of a business.  Procuring evidence of secondary meaning usually involves surveys and expert testimony at considerable expense.  Therefore, brand development consisting of unique designs, or combinations of distinctly stylized symbols or logos with words, to identify the source of goods or services is a cost-effective approach for trademark registration purposes.