Amazing Spaces, Inc. v. Metro Mini Storage, et al

Filing 501158444

Amazing Spaces, Inc. v. Metro Mini Storage, et al

Doc. 501158444

Case: 09-20702

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Date Filed: 06/29/2010

REVISED JUNE 29, 2010 IN THE UNITED STATES COURT OF APPEALS FOR THE FIFTH CIRCUIT United States Court of Appeals
Fifth Circuit

FILED
June 2, 2010 N o . 09-20702 Lyle W. Cayce Clerk

A M A Z I N G SPACES, INC., P la in t iff - Appellant v. M E T R O MINI STORAGE; LANDMARK INTEREST CORPORATION, D e fe n d a n t s - Appellees

A p p e a l from the United States District Court fo r the Southern District of Texas

B e fo r e KING, WIENER, and DENNIS, Circuit Judges. K I N G , Circuit Judge: A m a z in g Spaces, Inc., and Metro Mini Storage are rival self-storage b u s in e s s e s in Houston, Texas. Amazing Spaces brought this action against M e t r o and Landmark Interest Corporation, a construction company, alleging in fr in g e m e n t of a star design that it claims as a service mark. The district court c o n c lu d e d that the design was not a legally protectable mark and dismissed A m a z in g Spaces's claims on summary judgment. We agree that the design was n o t legally protectable, and we affirm the judgment dismissing Amazing Spaces's s e r v ic e mark infringement claims. However, we also conclude that the district c o u r t erred in dismissing Amazing Spaces's claims relating to infringement of

Dockets.Justia.com

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No. 09-20702 it s trade dress, and we reverse and remand for further proceedings. I . BACKGROUND A m a z in g Spaces and Metro compete directly with each other in providing s e lf-s t o r a g e services in Houston, Texas. Landmark has built facilities for both A m a z in g Spaces and Metro. Amazing Spaces claims, in connection with

p r o v id in g storage services, exclusive use rights in a design consisting of a raised, fi v e - p o i n t e d star set within a circle (the "Star Symbol"), a copy of which is a t t a c h e d as an appendix to this opinion.1 Metro uses a similar star design on its b u ild in g s . In response to this use, Amazing Spaces brought suit against Metro a n d Landmark in federal district court, alleging federal and state causes of a c t io n .2 With respect to the Star Symbol alone, Amazing Spaces brought a fe d e r a l claim for service mark infringement under the Lanham Act and state law c la im s for common law infringement and statutory dilution. With respect to its t r a d e dress, of which the Star Symbol comprises one element, Amazing Spaces b r o u g h t federal claims for trade dress infringement under the Lanham Act and c o p y r ig h t infringement and state law claims for common law unfair competition a n d statutory dilution. A m a z in g Spaces was founded in 1998 by Scott and Kathy Tautenhahn,
The parties and the district court used varying terminology in describing the design at issue. Amazing Spaces refers to it as the "Star Logo," Metro refers to it as the "Texas Star," and the district court's opinion refers to it as the "star mark." Except where alluding to a different design or quoting from either the parties or the district court, we will employ the term "Star Symbol." The federal claims are for service mark infringement under § 32 of the Lanham Act, 15 U.S.C. § 1114, trade dress infringement under § 43 of the Lanham Act, 15 U.S.C. § 1125, and copyright infringement based on trade dress under 17 U.S.C. § 501. The state law claims are for service mark and trade dress dilution under Texas's anti-dilution statute, TEX. BUS. & COM. CODE ANN. § 16.29 (Vernon 2002), common law service mark infringement, and common law unfair competition relating to trade dress.
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No. 09-20702 a n d it currently operates three storage facilities in the greater Houston area. The facilities opened in 1998, 2001, and 2006, respectively. Landmark was hired t o build each of these facilities and, at Amazing Spaces's request, installed the S t a r Symbol under the peaks of the facilities' gabled roofs. Amazing Spaces has u s e d the Star Symbol in its facilities' architecture and in its advertising, and it c la im s to have done so since at least April 1998. One trade magazine has r e c o g n iz e d Amazing Spaces for its storage services, and the magazine displayed t h e Star Symbol in connection with the accompanying article. Amazing Spaces h a s also used the Star Symbol to designate the locations of its facilities on maps, a n d it claims to have directed customers--through telephone advertisements--to " lo o k for the star." T h e Star Symbol is registered as a service mark with the United States P a t e n t and Trademark Office (PTO). Prior to applying for registration, Amazing S p a c e s engaged a company to perform a database search to determine whether o t h e r storage companies had registered a similar star mark; the search revealed n o such registrations. Amazing Spaces's application stated that it believed no o t h e r person or business was entitled to use the Star Symbol or a deceptively s im ila r design as a mark for storage services. On July 6, 2004, the PTO issued U .S . Service Mark Registration No. 2,859,845 (the "'845 Registration") for the S t a r Symbol; we have attached the '845 Registration as an appendix to this o p in io n . Amazing Spaces also holds a registration for another design (the "Peaks a n d Sky Symbol") that features a series of roof peaks, including stars on the g a b le s , placed below a sky expanse, with the words "AMAZING SPACES" u n d ern ea th . L a n d m a r k has also constructed self-storage facilities for Metro; these

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No. 09-20702 fa c ilit ie s feature a similar five-pointed-star-in-a-circle design (but not raised) on t h e ir gables. Despite Amazing Spaces's demand that Metro cease its use of a s t a r , Metro continued to use its design and remodeled existing facilities to in c lu d e the design. According to Amazing Spaces, this has caused confusion a m o n g its customers, who mistook Metro's facilities for new Amazing Spaces fa c ilit ie s . According to Kathy Tautenhahn, existing or prospective customers h a v e inquired about whether new Amazing Spaces facilities had opened where M e t r o facilities were located. The record also includes a declaration from a c u s t o m e r to similar effect. P r io r to this lawsuit, Amazing Spaces had, at one other time, threatened le g a l action against a rival self-storage business for using a star design on its b u ild in g s . However, the matter never culminated in a lawsuit: Community Self S t o r a g e removed its star design in response to Amazing Spaces's demands. In t h e present case, Amazing Spaces has submitted a declaration by its alarm t e c h n ic ia n that the technician was confused by the appearance of Community's fa c ilit y and believed it to be an Amazing Spaces facility. U n lik e Community, however, and as mentioned above, Metro refused to c e a s e using its star design, and Amazing Spaces proceeded to file the lawsuit at is s u e . Metro and Landmark each filed an answer, asserting various affirmative d e fe n s e s and counterclaims. One of these counterclaims was a request that the t r a d e m a r k be canceled for invalidity. The district court recognized early on that " [t ]h e r e does seem to be a question about the trademarkability of the Texas star lo g o ." Accordingly, the court ordered discovery to proceed in stages, with the fir s t stage limited to "the threshold issues raised by the `trademarkability' of the T e x a s star and similar issues affecting copyright and trade dress."

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No. 09-20702 F o llo w in g discovery, Metro3 moved for summary judgment on the ground t h a t the Star Symbol was not a valid service mark. It argued primarily that the S t a r Symbol was not inherently distinctive and that Amazing Spaces could not e s t a b lis h that it had acquired secondary meaning. It supported this contention b y presenting evidence that the same or a similar five-pointed star was used in c o m m e r c e "in at least 63 different industries and businesses on buildings, p r o p e r t y , and as part of logos" and on the buildings of "at least 28 other selfs t o r a g e locations." Amazing Spaces, Inc. v. Metro Mini Storage, 665 F. Supp. 2d 7 2 7 , 738 (S.D. Tex. 2009).4 The court concluded that "[t]he ubiquitous nature of t h e five-pointed star set within a circle precludes a finding that it is inherently d is t in c t iv e or that it can serve as an indicator of origin for a particular business," id ., and that "the record d[id] not raise a fact issue material to determining w h e t h e r the star mark has acquired distinctiveness through a secondary m e a n in g ," id. at 742. I n determining whether the Star Symbol was inherently distinctive, the d is t r ic t court considered two tests. See id. at 735­36. The first is known as the A b e r c r o m b ie test, after Judge Friendly's opinion in Abercrombie & Fitch Co. v. H u n tin g World, Inc., 537 F.2d 4 (2d Cir. 1976). Under this test, marks are " c la s s ifie d in categories of generally increasing distinctiveness . . . [:] (1) generic;

Although Metro and Landmark play distinct roles in Amazing Spaces's allegations of infringement, they asserted the same arguments at the summary judgment stage and now assert the same arguments on appeal. Thus, for ease of reference, unless we note otherwise or it is made apparent from context, further references in this opinion to Metro extend to Landmark as well. Metro submitted an affidavit from the former owner of one such storage facility attesting to the use of a raised, five-pointed star within a circle on the storage facility--on walls and on gables beneath roof peaks--prior to April 1998.
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No. 09-20702 (2 ) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful." Two Pesos, Inc. v. T a c o Cabana, Inc., 505 U.S. 763, 768 (1992) (citing Abercrombie, 537 F.2d at 9). The second test was articulated in Seabrook Foods, Inc. v. Bar­Well Foods Ltd., 5 6 8 F.2d 1342 (C.C.P.A. 1978). Under the Seabrook Foods test, courts look to a s e t of factors "[i]n determining whether a design is arbitrary or distinctive": [1 ] whether it was a "common" basic shape or design, [2] whether it w a s unique or unusual in a particular field, [3] whether it was a m e r e refinement of a commonly-adopted and well-known form of o r n a m e n ta t io n for a particular class of goods viewed by the public a s a dress or ornamentation for the goods, or [4] whether it was c a p a b le of creating a commercial impression distinct from the a c c o m p a n y in g words.5 I d . at 1344 (footnotes omitted). A fte r laying out the two tests, the district court proceeded to consider their a p p lic a t io n to the Star Symbol. It first determined that the Star Symbol was not g e n e r ic or a common geometric shape. Amazing Spaces, 665 F. Supp. 2d at 737. It then determined that the Star Symbol was not descriptive of any " c h a r a c te r is t ic or quality of self-storage service[s]." Id. For essentially the same r e a s o n , and because Amazing Spaces disclaimed any argument to the contrary, t h e court further concluded that the Star Symbol was not suggestive. Id. Under t h e Abercrombie rubric, this process of elimination left only two possibilities r e m a in in g : the Star Symbol was either arbitrary or fanciful. Both of those " c a t e g o r ie s of marks, because their intrinsic nature serves to identify a p a r tic u la r source of a product, are deemed inherently distinctive and are entitled t o protection." Two Pesos, 505 U.S. at 768. However, the district court refused

The district court did not discuss the fourth factor, presumably because that factor contemplates a design accompanied by words. See Amazing Spaces, 665 F. Supp. 2d at 736.

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No. 09-20702 t o reach such a conclusion, stating that "the star mark cannot be classified as a r b it r a r y or fanciful unless it is inherently distinctive so as to serve as a source id e n tifie r for Amazing Spaces." Amazing Spaces, 665 F. Supp. 2d at 737. T h e district court then proceeded to assess the inherent distinctiveness of t h e Star Symbol under the Seabrook Foods test, inquiring "whether the star m a r k is `so unique, unusual or unexpected' in the self-storage industry that `one c a n assume without proof that it will automatically be perceived by customers a s an indicator of origin.'" Id. (quoting 1 J. THOMAS MCCARTHY, MCCARTHY ON T RADEMARKS AND UNFAIR COMPETITION § 8:13, at 8­58.5 (4th ed. 2002) (h e r e in a ft e r "MCCARTHY ON TRADEMARKS")). Responding to the parties' dispute o v e r which Houston-area self-storage company first used a star design, the court d e t e r m in e d that "[r]egardless of whether Amazing Spaces was the first selfs t o r a g e business to use the star mark--at least in the Houston area--the mark is not inherently distinctive and does not act as an indicator of origin for any s e lf-s t o r a g e business, including Amazing Spaces." Id. at 738. The court reached t h is conclusion based on the fact that "[a] five-pointed star set within a circle is a common symbol long associated with Texas" and was used by numerous b u s in e s s e s , including self-storage businesses. Id. According to the district court, " [t ] h e ubiquitous nature of the five-pointed star set within a circle precludes a fin d in g that it is inherently distinctive or that it can serve as an indicator of o r ig in for a particular business." Id. H a v in g concluded that the Star Symbol was not inherently distinctive, the d is t r ic t court next examined whether the summary judgment record raised a fact is s u e regarding secondary meaning. See id. at 739. The court noted that the in q u ir y was primarily an empirical one, with survey evidence providing the best

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No. 09-20702 e v id e n c e and other evidence--such as length and manner of the mark's use, n a t u r e and extent of advertising and promotion of the mark, sales volume, a c t u a l confusion, and the defendant's intent--also bearing on the matter. Id. at 7 3 9 ­ 4 0 . The district court found that no fact issue had been raised regarding s e c o n d a r y meaning because Amazing Spaces had not submitted any survey e v id e n c e , the advertising primarily involved a different design of which the Star S y m b o l was only a minor part, and the evidence of actual confusion involved the S t a r Symbol only in conjunction with architectural similarities in the buildings. Id. at 741­42. F in a l judgment was entered by separate order on September 28, 2009. That judgment explained, "For the reasons stated in this court's Memorandum a n d Opinion entered this date, this action is dismissed with prejudice." The ju d g m e n t had the effect of dismissing Amazing Spaces's entire case and did not d iffe r e n t ia t e the claims based on the Star Symbol from those based on its trade d r e s s , of which the Star Symbol is merely one element. On October 19, Amazing S p a c e s filed a notice of appeal from the district court's judgment dismissing its a c t io n with prejudice.6

There was some confusion relating to Amazing Spaces's notice of appeal, but we discern no jurisdictional difficulties with proceeding on this case. On October 9, 2009, Metro moved before the district court for further relief, requesting an order canceling the '845 Registration. This was necessary because the district court had denied the motion for summary judgment on Metro's affirmative defenses and counterclaims as moot. See id. at 742. Ten days later, Amazing Spaces filed its notice of appeal. On November 17, Metro moved before this court for an order directing the district court to correct its judgment under Rule 60(a) of the Federal Rules of Civil Procedure and cancel the '845 Registration. We denied that motion on December 21. On appeal, neither party asserts that the district court's judgment was not a final judgment, and we do not construe Metro's motion as undermining the effectiveness, under Rule 4(a)(4)(A) of the Federal Rules of Appellate Procedure, of Amazing Spaces's notice of appeal.

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No. 09-20702 I I . STANDARD OF REVIEW " W e review a district court's grant of summary judgment de novo." Bd. of S u p e r v is o r s for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co. (S m a c k Apparel), 550 F.3d 465, 474 (5th Cir. 2008) (citing Noble Energy, Inc. v. B itu m in o u s Cas. Co., 529 F.3d 642, 645 (5th Cir. 2008)), cert. denied, 129 S. Ct. 2 7 5 9 (2009). Summary "judgment . . . should be rendered if the pleadings, the d is c o v e r y and disclosure materials on file, and any affidavits show that there is n o genuine issue as to any material fact and that the movant is entitled to ju d g m e n t as a matter of law." FED. R. CIV. P. 56(c)(2). "`We are obliged to c o n s t r u e all the evidence and reasonable inferences deduced therefrom in a light m o s t favorable to . . . the nonmoving party in the court below.'" Xtreme Lashes, L L C v. Xtended Beauty, Inc., 576 F.3d 221, 226 (5th Cir. 2009) (alteration o m it t e d ) (quoting Int'l Shortstop, Inc. v. Rally's, Inc., 939 F.2d 1257, 1260 (5th C ir . 1991)). [A ]t the summary judgment stage the judge's function is not himself t o weigh the evidence and determine the truth of the matter but to d e t e r m in e whether there is a genuine issue for trial. . . . [T]here is n o issue for trial unless there is sufficient evidence favoring the n o n m o v in g party for a jury to return a verdict for that party. A n d e r s o n v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986). "[T]he burden on the m o v in g party may be discharged by `showing'--that is, pointing out to the d is t r ic t court--that there is an absence of evidence to support the nonmoving p a r ty 's case." Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986). W h e n the moving party has carried its burden under Rule 56(c), its o p p o n e n t must do more than simply show that there is some m e t a p h y s ic a l doubt as to the material facts. In the language of the R u l e , the nonmoving party must come forward with specific facts s h o w in g that there is a genuine issue for trial. 9

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No. 09-20702 M a ts u s h ita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586­87 (1986) (c it a t io n s , footnote, emphasis, and quotation marks omitted). W h e t h e r a mark is inherently distinctive and whether it has acquired s e c o n d a r y meaning are questions of fact. Pebble Beach Co. v. Tour 18 I Ltd., 155 F .3 d 526, 537 (5th Cir. 1998), abrogated on other grounds by TrafFix Devices, I n c . v. Marketing Displays, Inc., 532 U.S. 23 (2001). Nevertheless, "summary ju d g m e n t may be upheld if the summary judgment record compels the c o n c lu s io n that the movant is entitled to judgment as a matter of law." Smack A p p a r e l, 550 F.3d at 474 (citing Beef/Eater Rests., Inc. v. James Burrough Ltd., 3 9 8 F.2d 637, 639 (5th Cir. 1968)). A district court's grant of summary judgment may be affirmed "based on a n y rationale presented to the district court for consideration and supported by fa c t s uncontroverted in the summary judgment record." Terrebonne Parish Sch. B d . v. Mobil Oil Corp., 310 F.3d 870, 887 (5th Cir. 2002) (citing Williams v. Int'l B h d . of Elec. Workers (In re Williams), 298 F.3d 458, 462 (5th Cir. 2002); Grenier v . Med. Eng'g Corp., 243 F.3d 200, 207 (5th Cir. 2001)); accord Conkling v. T u r n e r , 18 F.3d 1285, 1296 n.9 (5th Cir. 1994) ("This court may affirm a grant o f summary judgment on any appropriate ground that was raised to the district c o u r t and upon which both parties had the opportunity to introduce evidence." (c it in g cases)). I I I . DISCUSSION I n reviewing the parties' dispute over whether summary judgment was p r o p e r in this case, we first consider the issue addressed by the district court's o p in ion below--whether the Star Symbol is legally protectable as a service mark. We then evaluate whether summary judgment was appropriately granted on

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No. 09-20702 A m a z in g Spaces's trade dress claims as well. A. T h e Star Symbol T r a d e m a r k and service mark infringement claims are governed by the T r a d e m a r k Act of 1946 (Lanham Act), 15 U.S.C. §§ 1051 et seq.7 There are two e le m e n t s to a successful infringement claim under the Lanham Act.8 Smack

We note that Amazing Spaces brought claims under the Lanham Act and Texas law. The analysis with respect to Amazing Spaces's claims under the Lanham Act will be dispositive of its corresponding claims under Texas law as well. "A trademark infringement and unfair competition action under Texas common law presents essentially `no difference in issues than those under federal trademark infringement actions.'" Horseshoe Bay Resort Sales Co. v. Lake Lyndon B. Johnson Improvement Corp., 53 S.W.3d 799, 806 n.3 (Tex. App.--Austin 2001, pet. denied) (quoting Zapata Corp. v. Zapata Trading Int'l, Inc., 841 S.W.2d 45, 47 (Tex. App.--Houston [14th Dist.] 1992, no writ)). Nor does Amazing Spaces suggest that the analysis under the Lanham Act will not also dispose of its service mark dilution claim under the Texas anti-dilution statute. In any event, the arguments on appeal are framed solely in terms of federal law, and we address them accordingly. See AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1535 n.6 (11th Cir. 1986) (analyzing only federal Lanham Act claims where the district court and the parties had not separately addressed the plaintiff's state law claims). Amazing Spaces has asserted claims for infringement of its registered Star Symbol and its unregistered trade dress. The Lanham Act provides separate causes of action for infringement of a registered mark and an unregistered mark. The relevant portion of § 32, dealing with registered marks, provides: Any person who shall, without the consent of the registrant-- (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or (b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action by the registrant for the remedies hereinafter
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No. 09-20702 A p p a r e l , 550 F.3d at 474. The plaintiff must first "establish ownership in a le g a lly protectible mark, and second, . . . show infringement by demonstrating a likelihood of confusion." Id. (citing Am. Rice, Inc. v. Producers Rice Mill, Inc., 5 1 8 F.3d 321, 329 (5th Cir. 2008)); accord Paulsson Geophysical Servs., Inc. v. S ig m a r , 529 F.3d 303, 309 (5th Cir. 2008) (per curiam) ("To succeed in a t r a d e m a r k infringement claim, a party must first show that it has a protectable r ig h t in the mark and, second, show that there is a likelihood of confusion b e tw e e n the marks." (citing Security Ctr., Ltd. v. First Nat'l Security Ctrs., 750 F .2 d 1295, 1298 (5th Cir. 1985))). The district court's opinion granting summary

provided. Lanham Act § 32, 15 U.S.C. § 1114(1). The Lanham Act provides a cause of action for infringement of an unregistered mark in § 43(a): Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which-- (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. Lanham Act § 43(a)(1), 15 U.S.C. § 1125(a)(1). Although the Lanham Act separately establishes these causes of action, "[t]he same tests apply to both trademarks and trade dress to determine whether they are protectible and whether they have been infringed, regardless of whether they are registered or unregistered." Pebble Beach, 155 F.3d at 536 (citing Two Pesos, 505 U.S. at 768­70, 773­74; Sunbeam Prods., Inc. v. W. Bend Co., 123 F.3d 246, 251 n.4 (5th Cir. 1997), abrogated on other grounds by TrafFix Devices, 532 U.S. 23).

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No. 09-20702 ju d g m e n t dealt solely with the threshold inquiry regarding whether the Star S y m b o l was legally protectable as a mark and pretermitted discussing the lik e lih o o d of confusion element. I n reviewing whether the Star Symbol qualifies for protection as a mark, w e begin with the definitions provided by the Lanham Act. Section 45 of the L a n h a m Act9 separately defines "trademark" and "service mark," but the terms e s s e n t ia lly include: a n y word, name, symbol, or device, or any combination thereof . . . u s e d by a person . . . to identify and distinguish his or her goods [or s e r v ic e s ] . . . from those manufactured or sold [or provided] by others a n d to indicate the source of the goods [or services], even if that s o u r c e is unknown.1 0

We note that the Lanham Act has been substantially revised since its passage in 1946. Our citations of provisions of the Lanham Act are meant to refer to the provisions currently in force and not to the statute's original text.
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The complete definition of the term "trademark" in § 45 provides:

The term "trademark" includes any word, name, symbol, or device, or any combination thereof-- (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. Lanham Act § 45, 15 U.S.C. § 1127. The complete definition of a "service mark" provides: The term "service mark" means any word, name, symbol, or device, or any combination thereof-- (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish the services of one person, including a unique

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No. 09-20702 L a n h a m Act § 45, 15 U.S.C. § 1127; accord Two Pesos, 505 U.S. at 768 ("In order t o be registered [and thus legally protectable], a mark must be capable of d is t in g u is h in g the applicant's goods from those of others." (citing Lanham Act § 2, 15 U.S.C. § 1052)). "To be protectable, a mark must be distinctive . . . ." Am. R ic e , 518 F.3d at 329; accord RESTATEMENT § 13 cmt. a, at 105 ("[A] designation is protectable as a trademark . . . only if the designation is `distinctive.'"); 1 M CC ARTHY ON TRADEMARKS § 3:1, at 3­3 ("In determining what can qualify as a trademark, it is crucial that the symbol in question be so distinctive that it is c a p a b le of performing the function of identifying and distinguishing the goods t h a t bear the symbol."). [A ] mark can be distinctive in one of two ways. First, a mark is in h e r e n t ly distinctive if its intrinsic nature serves to identify a p a r t ic u la r source. . . . Second, a mark has acquired distinctiveness, e v e n if it is not inherently distinctive, if it has developed secondary m e a n in g , which occurs when, in the minds of the public, the p r im a r y significance of a mark is to identify the source of the p r o d u c t rather than the product itself.

service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor. Id. Although trademarks and service marks are separately defined, their definitions under the Lanham Act closely track each other, and the cases construing the two terms inform our analysis equally. See Union Nat'l Bank of Tex., Laredo, Tex. v. Union Nat'l Bank of Tex., Austin, Tex., 909 F.2d 839, 841 n.2 (5th Cir. 1990); RESTATEMENT (THIRD) OF UNFAIR CO M P E T IT I O N § 9 cmt. f, at 82 (1995) (hereinafter "RESTATEMENT") ("The substantive rules applicable to both types of marks are fundamentally identical, however, and the term `trademark' is generally understood to include marks used in the marketing of either goods or services."); 1 MCCARTHY ON TRADEMARKS § 4:14, at 4­16 ("For all practical purposes, both trademarks and service marks are subject to the same substantive rules of validity and infringement.").

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No. 09-20702 W a l­ M a r t Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210­11 (2000) (c it a t io n s , alterations, and quotation marks omitted); accord RESTATEMENT § 13, a t 104­05 ("A word, name, symbol, device, or other designation . . . is `distinctive' . . . if: (a) the designation is `inherently distinctive,' . . . or (b) the designation, a lt h o u g h not `inherently distinctive,' has . . . acquired distinctiveness . . . [,] c o m m o n ly referred to as `secondary meaning.'"). Registration of a mark with the P T O constitutes prima facie evidence of the mark's validity and the registrant's e x c lu s i v e right to use the registered mark in commerce with respect to the s p e c ifie d goods or services. Lanham Act §§ 7(b) & 33(a), 15 U.S.C. §§ 1057(b) & 1 1 1 5 (a ); Elvis Presley Enters. v. Capece, 141 F.3d 188, 194 (5th Cir. 1998) (citing L a n h a m Act § 33(a), 15 U.S.C. § 1115(a)). A m a z in g Spaces claims that the Star Symbol is sufficiently distinctive to w a r r a n t protection as a service mark. The requisite distinctiveness, it claims, is shown in three distinct manners: (1) the statutory presumption of validity flo w in g from the '845 Registration; (2) the Star Symbol's inherent

d is t in c t iv e n e s s ; and (3) evidence that the Star Symbol has acquired secondary m e a n in g . In response, Metro rejects each claimed source of distinctiveness and fu r t h e r requests that we order cancellation of the '845 Registration. We address e a c h argument in turn. 1. S t a t u t o r y Presumption of Validity

A s mentioned above, proof of the registration of a mark with the PTO c o n s t it u t e s prima facie evidence that the mark is valid and that the registrant h a s the exclusive right to use the registered mark in commerce with respect to t h e specified goods or services. Lanham Act §§ 7(b) & 33(a), 15 U.S.C. §§ 1057(b) & 1115(a); Elvis Presley Enters., 141 F.3d at 194 (citing Lanham Act § 33(a), 15

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No. 09-20702 U .S .C . § 1115(a)). This presumption of validity may be rebutted by establishing t h a t the mark is not inherently distinctive. See Vision Ctr. v. Opticks, Inc., 596 F .2 d 111, 119 (5th Cir. 1979) ("Although a statutory presumption of validity is a c c o r d e d to marks registered under the Lanham Act, this presumption is r e b u t ta b le and may be overcome by establishing the generic or descriptive n a t u r e of the mark." (citations omitted)); Xtreme Lashes, 576 F.3d at 232 (noting t h a t , registration notwithstanding, "if the mark is found to be either generic or d e s c r ip t iv e and lacking secondary meaning, a court may cancel it" (citing 15 U .S .C . § 1119; Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1184 (5th Cir. 1 9 8 0 ))). The parties disagree over the effect to be accorded the presumption of v a lid it y . According to Amazing Spaces, summary judgment was inappropriate in light of the existence of the presumption. In contrast, Metro's response urges t h a t , "given the ubiquitous use of the Texas Star, the presumption has d is a p p e a r e d entirely from the case." T h e Fourth Circuit has, in three cases, addressed the effect of the p r e s u m p t io n of validity accorded registered trademarks. In America Online, Inc. v . AT&T Corp., the court was confronted with an argument that it should accord C h e v r o n deference 1 1 to the PTO's decision to register a mark: A lt h o u g h we have observed that a district court should not fr e e ly substitute its opinion for that of the PTO, this observation w a s not made because the PTO was entitled to deference, but rather b e c a u s e its decision to register a mark, without requiring evidence o f secondary meaning, was powerful evidence that the registered

The doctrine of Chevron deference refers to the Supreme Court's decision in Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984). "Under the familiar Chevron framework, we defer to an agency's reasonable interpretation of a statute it is charged with administering." Cuomo v. Clearing House Ass'n, L.L.C., 129 S. Ct. 2710, 2715 (2009) (citing Chevron, 467 U.S. 837).

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No. 09-20702 m a r k [was inherently distinctive]. .... T h e prima facie evidence provided by the certificate of registration w a s in this case sufficient to establish a question of material fact t h a t could not be resolved on summary judgment. As the [12 ] C o m m it t e e Note to Federal Rule of Evidence 301 (dealing with p r e s u m p t io n s ) states, a presumption does not vanish upon the in t r o d u c t io n of contradicting evidence . . . ; instead it is merely d e e m e d sufficient evidence of the fact presumed, to be considered by t h e jury or other finder of fact. Although evidence rebutting the p r e s u m p t io n may neutralize the presumption itself--i.e., that the b u r d e n of proof on the fact giving rise to the presumption has been m e t without rebutting evidence--it does not eliminate from the case t h e evidence itself that gave rise to the presumption. Thus, through t h e certificate of registration, the Commissioner introduces his o p in io n that the application of the registrant was sufficient to d e m o n s t r a t e a valid mark. 2 4 3 F.3d 812, 817­18 (4th Cir. 2001) (citations, alterations, and quotation marks o m itte d ). The America Online court then noted that, in addition to the

r e g is t r a t io n , other evidence tended to create a factual dispute, and it concluded t h a t summary judgment had been improperly granted. Id. at 818. T w o later cases addressed whether the America Online decision foreclosed s u m m a r y judgment in any case where the validity of a registered mark was c h a lle n g e d . One case suggested that summary judgment was indeed precluded:

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Rule 301 provides:

In all civil actions and proceedings not otherwise provided for by Act of Congress or by these rules, a presumption imposes on the party against whom it is directed the burden of going forward with evidence to rebut or meet the presumption, but does not shift to such party the burden of proof in the sense of the risk of nonpersuasion, which remains throughout the trial upon the party on whom it was originally cast. FE D . R. EVID. 301.

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No. 09-20702 " T h e prima facie evidence provided by the certificate of registration is generally s u ffic ie n t to establish a question of material fact that cannot be resolved on s u m m a r y judgment." U.S. Search, LLC v. U.S. Search.Com Inc., 300 F.3d 517, 5 2 4 (4th Cir. 2002) (citing Am. Online, 243 F.3d at 818). In a later case, the c o u r t clarified its approach when confronted with the "argument that [a] c e r t ific a t e of registration alone creates an issue of fact . . . and thereby precludes s u m m a r y judgment." Retail Servs. Inc. v. Freebies Publ'g, 364 F.3d 535, 542 (4th C ir . 2004). The Retail Services court discussed the burden-shifting effect of the p r e s u m p tio n : T h e presumption of validity flowing from trademark r e g is t r a t io n . . . has a burden-shifting effect, requiring the party c h a lle n g in g a registered mark to produce sufficient evidence to e s t a b lis h that the mark is [non-distinctive] by a preponderance of e v id e n c e . The burden shifted by the presumption is one of p r o d u c t io n rather than persuasion. If sufficient evidence of [nond is t in c t i v e n e s s ] is produced to rebut the presumption, the p r e s u m p t io n is "neutralized" and essentially drops from the case, a lt h o u g h the evidence giving rise to the presumption remains. I d . at 542­43 (citations and alterations omitted). The court then expressly r e je c t e d the contention "that the issuance of a certificate of registration is, by it s e lf, sufficient to create a jury issue on the validity of the mark in question b e c a u s e it embodies the PTO's informed opinion that the mark is registrable," id . at 543, and it affirmed the district court's grant of summary judgment in lig h t of the "one-sided evidence . . . rebut[ting] the presumption" in that case, id. a t 546. T h e approach that the Fourth Circuit has taken regarding the p r e s u m p t io n of validity is consistent with our precedent. See Vision Ctr., 596 F .2 d at 119­20 ("Opticks has argued persuasively, not merely with equal force, 18

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No. 09-20702 t h a t the partnership's name is [not inherently distinctive]. The weight of these a r g u m e n t s is more than sufficient to rebut the prima facie presumption that the n a m e is [inherently distinctive]." (citations omitted)). Other circuits are in g e n e r a l agreement. See Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 783­84 (9 t h Cir. 2002) ("Under Tie Tech's theory . . . , a defendant in a trademark in fr in g e m e n t action could never prevail at the summary judgment stage on an in v a lid it y defense because the registration itself would always raise a material is s u e of fact. This approach not only inflates the evidentiary value of a

t r a d e m a r k registration, but ignores situations where [validity] can be d e t e r m in e d as a matter of law based on undisputed facts."); Door Sys., Inc. v. P r o ­ L in e Door Sys., Inc., 83 F.3d 169, 172 (7th Cir. 1996) ("The presumption of v a lid it y . . . evaporates as soon as evidence of invalidity is presented. Its only fu n c tio n is to incite such evidence, and when the function has been performed t h e presumption drops out of the case." (citations omitted)); see also ITC Ltd. v. P u n c h g in i, Inc., 482 F.3d 135, 148 (2d Cir. 2007) ("The significance of a p r e s u m p t io n . . . is to shift the burden of production to the mark owner to come fo r w a r d with evidence . . . . The ultimate burden of persuasion . . . , however, r e m a in s at all times with the alleged infringer."); A.C. Aukerman Co. v. R.L. C h a id e s Constr. Co., 960 F.2d 1020, 1037 (Fed. Cir. 1992) ("[A] presumption is n o t merely rebuttable but completely vanishes upon the introduction of evidence s u ffic ie n t to support a finding of the nonexistence of the presumed fact."). As a r e s u lt , Metro's introduction of evidence that the Star Symbol is not distinctive h a s reduced the presumption of validity to evidence that the PTO is of the o p in io n that the Star Symbol is sufficiently distinctive to be legally protectable a s a mark.

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No. 09-20702 2. I n h e r e n t Distinctiveness

A s mentioned above, "a mark is inherently distinctive if `its intrinsic n a t u r e serves to identify a particular source.'" Wal­Mart Stores, 529 U.S. at 210 (a lt e r a t io n omitted) (quoting Two Pesos, 505 U.S. at 768). Inherent

d is t in c t iv e n e s s is attributable to a mark when the mark "almost automatically t e lls a customer that it refers to a brand and . . . immediately signal[s] a brand o r a product source." Id. at 212 (alterations and internal quotation marks o m it t e d ) (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162­63 (1 9 9 5 )). The parties disagree over not only the answer to whether the Star S y m b o l is inherently distinctive but also over the proper method for conducting t h e inquiry. Metro urges that the familiar Abercrombie test cannot be used to c a t e g o r iz e the Star Symbol and instead asks that we apply the Seabrook Foods t e s t to determine that the Star Symbol is not inherently distinctive. Amazing S p a c e s , by contrast, presses the application of the Abercrombie test, under which it claims the Star Symbol is inherently distinctive, and it argues alternatively t h a t the Star Symbol is inherently distinctive under the Seabrook Foods test. a. A b e rc r o m b ie

I n Abercrombie, Judge Friendly sought to arrange the universe of marks in t o a spectrum of distinctiveness. See 537 F.2d at 9. As the Supreme Court has n o te d , "[m]arks are often classified in categories of generally increasing d is t in c t iv e n e s s ; following the classic formulation set out by Judge Friendly, they m a y be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful." Two Pesos, 505 U.S. at 768 (citing Abercrombie, 537 F.2d at 9); accord Xtreme L a s h e s , 576 F.3d at 227 (noting that "[m]arks are normally assigned" to these c a t e g o r ie s ). Under this scheme, "`[t]he latter three categories of marks, because

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No. 09-20702 t h e ir intrinsic nature serves to identify a particular source of a product, are d e e m e d inherently distinctive and are entitled to protection,'" Xtreme Lashes, 5 7 6 F.3d at 227 (quoting Two Pesos, 505 U.S. at 768), while "[g]eneric terms r e c e iv e no trademark protection, [and] descriptive terms merit protection only if they have secondary meaning," id. (citing Two Pesos, 505 U.S. at 769). W e agree with Metro that the Star Symbol resists categorization under the A b e r c r o m b ie test, and we consequently do not rely on a rote application of its c a t e g o r ie s in determining whether the Star Symbol is inherently distinctive. The Supreme Court's most recent recitation of the Abercrombie categories noted it s use only in the context of marks consisting of words. See Wal­Mart Stores, 5 2 9 U.S. at 210 ("In the context of word marks, courts have applied the nowc la s s ic test originally formulated by Judge Friendly . . . ." (emphasis added) (c it in g Abercrombie, 537 F.2d at 10­11)). The Court's precedent also supports t h e proposition that some marks, although deserving of legal protection, do not fit within the Abercrombie spectrum. In Qualitex, the Court declined to apply t h e Abercrombie test to a mark consisting purely of a shade of color used in a p r o d u c t 's trade dress, holding that the mark could constitute a legally p r o t e c t a b le mark only through a showing of secondary meaning. 514 U.S. at 1 6 2 ­ 6 3 . The Court further extended that logic when, in Wal­Mart Stores, it s t a t e d that "[i]t seems to us that [product] design, like color, is not inherently d is t in c t iv e " and held that marks consisting of a product's design were p r o t e c t a b le only upon proof of secondary meaning--a conclusion it could not h a v e reached had it applied the Abercrombie test. Wal­Mart Stores, 529 U.S. at 2 1 2 . Professor McCarthy, a luminary in the field of trademark law, has likewise s u g g e s t e d that the Abercrombie test may not apply to all marks, stating that

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No. 09-20702 " [u ]s e of the spectrum of descriptive, suggestive, arbitrary and fanciful is largely c o n fin e d to word marks. It is usually not suitable for nonword designations such a s shapes and images . . . [, which] must be judged by other guidelines." 2 M CC ARTHY ON TRADEMARKS § 11:2, at 11­7. The RESTATEMENT, in a section a d d r e s s e d to symbols, graphic designs, and colors, agrees: A symbol or graphic design is not inherently distinctive unless t h e nature of the designation and the manner of its use make it lik e ly that prospective purchasers will perceive the designation as a n indication of source. Commonplace symbols and designs are not in h e r e n t ly distinctive since their appearance on numerous products m a k e s it unlikely that consumers will view them as distinctive of t h e goods or services of a particular seller. Thus, unless the symbol o r design is striking, unusual, or otherwise likely to differentiate the p r o d u c ts of a particular producer, the designation is not inherently d is t in c t iv e . R ESTATEMENT § 13 cmt. d, at 107. A s the district court discovered, the challenge of placing the Star Symbol in t o Abercrombie's constellation of categories is a futile endeavor. We have d e s c r ib e d the Abercrombie categories as follows: A generic term is the name of a particular genus or class of w h ic h an individual article or service is but a member. A generic t e r m connotes the basic nature of articles or services rather than the m o r e individualized characteristics of a particular product. . . . Such t e r m s as aspirin and cellophane have been held generic and t h e r e fo r e unprotectable as trademarks. A descriptive term identifies a characteristic or quality of an a r t ic le or service, such as its color, odor, function, dimensions, or in g r e d ie n t s . . . . Examples of descriptive marks would include Alo w it h reference to products containing gel of the aloe vera plant and V is io n Center in reference to a business offering optical goods and s e r v ic e s . . . . A suggestive term suggests, rather than describes, some 22

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No. 09-20702 p a r t ic u la r characteristic of the goods or services to which it applies a n d requires the consumer to exercise the imagination in order to d r a w a conclusion as to the nature of the goods and services. . . . The term Coppertone has been held suggestive in regard to sun t a n n in g products. A r b itr a r y or fanciful terms bear no relationship to the p r o d u c ts or services to which they are applied. . . . The term Kodak is properly classified as a fanciful term for photographic supplies; I v o r y is an arbitrary term as applied to soap. Z a ta r a in s , Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 790­91 (5th Cir. 1 9 8 3 ) (citations and quotation marks omitted), abrogated on other grounds by K B Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004). A mark's placement on this spectrum determines whether and how it is entitled t o legal protection. Marks that are suggestive, arbitrary, or fanciful, "because t h e ir intrinsic nature serves to identify a particular source of a product, are d e e m e d inherently distinctive and are entitled to protection." Two Pesos, 505 U .S . at 768. In contrast, descriptive marks may be protected upon a showing of a c q u ir e d or secondary meaning, while generic marks may never acquire s e c o n d a r y meaning and are categorically excluded from protection. 768­69. T h e district court briefly probed the utility of applying the Abercrombie t e s t and concluded that the Star Symbol did not fit as a generic, descriptive, or s u g g e s t iv e mark. See Amazing Spaces, 665 F. Supp. 2d at 737. The district c o u r t first rejected the notion that the Star Symbol was generic because "[a] fivep o in te d star within a circle does not refer to a product or service provided by a s e lf-s t o r a g e company" and "[t]he evidence of widespread use of a five-point star o r a five-point star set within a circle by many diverse businesses and g o v e r n m e n t offices supports the conclusion that the star mark is not related to 23 Id. at

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No. 09-20702 o r a generic symbol for self-storage goods or services." Id. It next determined t h a t the Star Symbol was not descriptive because "[i]t does not identify a c h a r a c t e r is t ic or quality of self-storage service, such as its function or quality." Id. Nor was the Star Symbol suggestive, according to the district court, because " [t ]h e r e is no basis to conclude that a five-pointed star set within a circle s u g g e s t s an attribute of self-storage services." Id. We discern no flaws in the d is t r ic t court's analysis with respect to these three categories. However, the lo g ic a l extension of the district court's analysis is the conclusion that the Star S y m b o l is arbitrary or fanciful, which under the Abercrombie test would render it inherently distinctive and thus entitled to protection. Yet the district court r e fu s e d to so conclude, stating that "the star mark cannot be classified as a r b it r a r y or fanciful unless it is inherently distinctive so as to serve as a source id e n tifie r for Amazing Spaces." Id. It then turned to the Seabrook Foods test in c o n d u c t in g its inquiry into the Star Symbol's inherent distinctiveness. See id. W e agree that the Star Symbol--indeed, any mark--lacks inherent d is t in c t iv e n e s s if its intrinsic nature does not serve to identify its source. See W a l­ M a r t Stores, 529 U.S. at 210 ("[A] mark is inherently distinctive if `its in t r in s ic nature serves to identify a particular source.'" (alteration omitted) (q u o tin g Two Pesos, 505 U.S. at 768)). Furthermore, as we have already

i n d i c a t e d , we approve the district court's decision to apply a test other than A b e r c r o m b ie in this case. However, we disagree somewhat with the district c o u r t's reasoning that a mark cannot be categorized as arbitrary or fanciful u n le s s it is inherently distinctive. Under the Abercrombie test, it is the

c a t e g o r iz a t io n of a mark that dictates its inherent distinctiveness, not the other w a y around. A rote application of the Abercrombie test yields the conclusion

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No. 09-20702 t h a t the Star Symbol is an arbitrary or fanciful mark because it "`bear[s] no r e la t io n s h ip to the products or services to which [it is] applied.'" Pebble Beach, 1 5 5 F.3d at 540 (quoting Zatarains, 698 F.2d at 791).1 3 Were we to apply the A b e r c r o m b ie test mechanically to the Star Symbol, without an eye to the q u e s t io n the test seeks to answer, we would be left with the conclusion that the S t a r Symbol is inherently distinctive. The district court, aware of that result, p r o c e e d e d to apply the Seabrook Foods test. See Amazing Spaces, 665 F. Supp. 2 d at 737. B o t h the Supreme Court and scholars have questioned the applicability of t h e Abercrombie test to marks other than words. See Wal­Mart Stores, 529 U.S. a t 210­13 (noting that the Abercrombie test was developed and applied "[i]n the c o n t e x t of word marks" and declining to apply it to a mark consisting of product d e s ig n ); Qualitex, 514 U.S. at 162­63 (referring to the Abercrombie test but not a p p ly in g it to a mark consisting of a shade of color); RESTATEMENT § 13 cmt. d,

One commentator has noted that marks consisting of symbols and designs are typically arbitrary with respect to their associated goods and services where the marks are "nonrepresentational": Nonverbal and nonrepresentational designs and figures are perfectly acceptable as trademarks. Indeed, they have the advantage of being totally arbitrary, and so cannot be descriptive of the goods or services. The only problem which may be encountered is the question of whether such designs or figures are regarded by the public as identifying indicia or merely as decorations. Especially is this true of such simple figures as rectangles, diamonds, circles, triangles, or lines. LO U I S ALTMAN & MALLA POLLACK, 3 CALLMAN ON UNFAIR COMPETITION, TRADEMARKS AND MO N O P O L I E S § 18:24 (4th ed. 2010) (footnotes omitted). Under this reasoning, nonverbal marks--even though "arbitrary"--must still be shown to serve as identifying indicia. Professor McCarthy appears to share the view that such marks are arbitrary when they are nonrepresentational. See 1 MCCARTHY ON TRADEMARKS § 7:36, at 7­91 ("A picture that is merely a representation of the goods themselves is regarded as merely descriptive of the goods.").

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No. 09-20702 a t 107 ("[U]nless the symbol or design is striking, unusual, or otherwise likely t o differentiate the products of a particular producer, the designation is not in h e r e n t ly distinctive."); 1 MCCARTHY ON TRADEMARKS § 7:33, at 7­88.1­89 (" O r d in a r y geometric shapes . . . are regarded as nondistinctive and protectable o n ly upon proof of secondary meaning. . . . However, uncommon or unusual s h a p e s and symbols . . . can be regarded as inherently distinctive . . . . The issue is whether this shape is so unusual for this type of goods or services that its d is t in c t iv e n e s s can be assumed."); 1 MCCARTHY ON TRADEMARKS § 8:13, at 8 ­ 5 8 . 1 ("Only in some cases does [Abercrombie] classification make sense [for t r a d e dress]. . . . The word spectrum of marks simply does not translate into the w o r ld of shapes and images."); 2 MCCARTHY ON TRADEMARKS § 11:2, at 11­7 (" U s e of the spectrum of descriptive, suggestive, arbitrary and fanciful is largely c o n fin e d to word marks. It is usually not suitable for nonword designations such a s shapes and images making up trade dress."). We do not go so far as to hold t h a t the Abercrombie test is eclipsed every time a mark other than a word is at is s u e . Instead, we hold that the Abercrombie test fails to illuminate the

fu n d a m e n t a l inquiry in this case: whether the Star Symbol's "`intrinsic nature s e r v e s to identify'" Amazing Spaces and its storage services. Wal­Mart Stores, 5 2 9 U.S. at 210 (quoting Two Pesos, 505 U.S. at 768). For the answer to that q u e s t io n , we now turn to the Seabrook Foods test employed by the district court. b. S e a b r o o k Foods

I n contrast to the Abercrombie test, the Seabrook Foods test, articulated b y the U.S. Court of Customs and Patent Appeals in 1977, applies expressly to m a r k s consisting of symbols and designs: I n determining whether a design is arbitrary or distinctive t h is court has looked to [1] whether it was a "common" basic shape 26

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No. 09-20702 o r design, [2] whether it was unique or unusual in a particular field, [3 ] whether it was a mere refinement of a commonly-adopted and w e ll-k n o w n form of ornamentation for a particular class of goods v ie w e d by the public as a dress or ornamentation for the goods, or [4 ] whether it was capable of creating a commercial impression d is t in c t from the accompanying words. S e a b r o o k Foods, 568 F.2d at 1344 (footnotes omitted).1 4 The first three of the S e a b r o o k Foods "`questions are merely different ways to ask whether the design, s h a p e or combination of elements is so unique, unusual or unexpected in this m ar k e t that one can assume without proof that it will automatically be perceived b y customers as an indicator of origin--a trademark.'" I.P. Lund Trading ApS v . Kohler Co., 163 F.3d 27, 40 (1st Cir. 1998) (quoting 1 MCCARTHY ON T RADEMARKS § 8:13, at 8­58.5).1 5 As is true of the Abercrombie test, the

S e a b r o o k Foods test seeks an answer to the question whether a mark's "`intrinsic n a t u r e serves to identify a particular source.'" Wal­Mart Stores, 529 U.S. at 210 (q u o tin g Two Pesos, 505 U.S. at 768); accord 1 MCCARTHY ON TRADEMARKS § 3:3,
14

As noted above, the district court omitted discussion of the fourth factor, which by its terms applies only when a party seeks trademark protection for a background design typically accompanied by words. See Amazing Spaces, 665 F. Supp. 2d at 736. Similarly, we will not consider the fourth Seabrook Foods factor. The Second Circuit has also used a related test that asks "whether [the mark] is `likely to serve primarily as a designator of origin of the product.'" Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1008 (2d Cir. 1995) (quoting Duraco Prods., Inc. v. Joy Plastic Enters., 40 F.3d 1431, 1449 (3d Cir. 1994)). Although the Knitwaves court quoted the Duraco Products court for part of its test, it rejected the requirements that the product configuration "be `unusual and memorable' and `conceptually separable from the product.'" Id. at 1009 n.6 (quoting Duraco Prods., 40 F.3d at 1449); see also Stuart Hall Co. v. Ampad Corp., 51 F.3d 780, 787­88 (8th Cir. 1995) (rejecting the Duraco Products test as inconsistent with Two Pesos by imposing additional, non-statutory requirements). The First Circuit has, in turn, criticized the Knitwaves test as inconsistent with Two Pesos because it fails to keep the inherent distinctiveness inquiry separate from the secondary meaning inquiry. See I.P. Lund Trading, 163 F.3d at 41. This case does not require us to delve into the propriety of these variations on the Seabrook Foods test, and we do not do so.
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No. 09-20702 a t 3­6 ("[A] designation must be proven to perform the job of identification: to id e n tify one source and distinguish it from other sources. If it does not do this, t h e n it is not protectable as a trademark, service mark, trade dress or any s im ila r exclusive right.").1 6 W e agree with the assessment of the I.P. Lund Trading court and P r o fe s s o r McCarthy that the Seabrook Foods factors are variations on a theme r a t h e r than discrete inquiries. In Star Industries v. Bacardi & Co., the Second C ir c u it noted that "`[c]ommon basic shapes' or letters are, as a matter of law, not in h e r e n t ly distinctive . . . , [but] stylized shapes or letters may qualify, provided t h e design is not commonplace but rather unique or unusual in the relevant m a r k e t ." 412 F.3d 373, 382 (2d Cir. 2005) (citing Seabrook Foods, 568 F.2d at 1 3 4 4 ; Permatex Co. v. Cal. Tube Prods., Inc., 175 U.S.P.Q. 764, 766 (T.T.A.B. 1 9 7 2 )). This statement, turning on whether the symbol or design is "common," c o m p r is e s , essentially, the first two Seabrook Foods factors. However, the third S e a b r o o k Foods factor similarly asks whether a symbol or design is "common" in the sense that it is likely to be perceived by the public as ornamentation r a t h e r than a mark. See Wiley v. Am. Greetings Corp., 762 F.2d 139, 142 (1st C ir . 1985) (equating a red heart shape on a teddy bear to "an ordinary geometric s h a p e " because it "carrie[d] no distinctive message of origin to the consumer, . . .
We note, of course, that the Wal­Mart Court was urged by the respondent in that case and by the United States as amicus curiae to adopt the Seabrook Foods test writ large for product design but declined to do so. Id. at 213­14. The Court's concern was that "[s]uch a test would rarely provide the basis for summary disposition of an anticompetitive strike suit." Id. at 214. However, as discussed below, we are of the opinion that the relevant portions of the Seabrook Foods test do provide a basis for summary disposition in this case. Because we conclude that the Star Symbol is not inherently distinctive under the Seabrook Foods test, we do not address whether it constitutes a "reasonably clear test," id. at 213, such that it would be preferable to the Abercrombie test in the ordinary trademark or service mark dispute.
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No. 09-20702 g iv e n the heart shape's widespread use as decoration for any number of products p u t out by many different companies").1 7 A "common" symbol or design--lacking in h e r e n t distinctiveness--is the antithesis of a symbol or design that "`is so u n iq u e , unusual or unexpected in this market that one can assume without proof t h a t it will automatically be perceived by customers as an indicator of origin--a t r a d e m a r k . '" I.P. Lund Trading, 163 F.3d at 40 (quoting 1 MCCARTHY ON

T RADEMAR K S § 8:13, at 8­58.5); accord RESTATEMENT § 13 cmt. d, at 107 (" C o m m o n p la c e symbols and designs are not inherently distinctive since their a p p e a r a n c e on numerous products makes it unlikely that consumers will view t h e m as distinctive of the goods or services of a particular seller."). T h e district court determined that the Star Symbol was "not a plain fivep o in te d star" but was instead "shaded and set within a circle," rendering it " s u ffic ie n t [ly ] styliz[ed]" to be "more than a common geometric shape." Amazing S p a c e s , 665 F. Supp. 2d at 737. It then proceeded to conclude that the Star S y m b o l "[wa]s not inherently distinctive and d[id] not act as an indicator of o r ig in for any self-storage business, including Amazing Spaces." Id. at 738. It s u p p o r t e d this assertion with a discussion of "[t]he ubiquitous nature of the five-

The interrelationship between these inquiries is also reflected in Professor McCarthy's discussion of common geometric shapes: Most common geometric shapes are regarded as not being inherently distinctive, in view of the common use of such shapes in all areas of advertising. Thus, such ordinary shapes as circles, ovals, squares, etc., either when used alone or as a background for a word mark, cannot function as a separate mark unless (1) the shape is likely to create a commercial impression on the buyer separate from the word mark or any other indicia and (2) the shape is proven to have secondary meaning . . . . The rationale is that such designs have been so widely and commonly used as mere decorative graphic elements that the origin-indicating ability of such designs has been diminished. 1 MCCARTHY ON TRADEMARKS § 7:29, at 7­73­74 (footnotes omitted).

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No. 09-20702 p o in te d star set within a circle" in Texas, specifically its "use[] as a decoration o r ornamentation on innumerable buildings, signs, roads, and products." Id. The court concluded that this ubiquity--including use of the same or a similar s t a r design in 63 businesses and 28 other self-storage locations--"preclude[d] a fin d in g that [the Star Symbol wa]s inherently distinctive or that it c[ould] serve a s an indicator of origin for a particular business." Id. U n d o u b t e d ly , the Star Symbol is stylized relative to an unshaded fivep o in te d star design not set within a circle. However, we disagree that the issue o f stylization revolves around comparing a design's actual appearance to its c o r r e s p o n d in g platonic form. Instead, as discussed above, asking whether a s h a p e is stylized is merely another way of asking whether the design is " c o m m o n p la c e " or "unique or unusual in the relevant market," Star Indus., 412 F .3 d at 382 (citing Permatex, 175 U.S.P.Q. at 766), or whether it is "a mere r e fin e m e n t 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," S e a b r o o k Foods, 568 F.2d at 1344.1 8 The stylization inquiry is properly

The parties dispute the scope of the "relevant market"--specifically, whether the district court correctly considered use of a similar or iden