Key Points: 

  1. Product packaging and product design may qualify for trademark protection as trade dress. However, different sections of the Lanham Act apply.
  2. Product packaging may be granted trademark registration under the Lanham Act on inherently distinctive grounds if the other requirements for trademark registration are met.
  3. A product design may be granted trademark registration under Section 2f of the Lanham Act on the basis of widespread public recognition (i.e., acquired distinctiveness) over a period of years if the other requirements for trademark registration are met.
  4. The Trademark Trial & Appeal Board held that the Guitar-Shaped hotel/casino qualifies for trademark protection as being inherently distinctive because it is akin to product packaging and the shape is unique in the “hotel and casino” services industry.


Registered trademark protection is routinely sought for brand names,  logos, and slogans.  A less well-known but still powerful type of trademark protection involves trade dress.  The Lanham Act protects trade dress if it serves as the same-source identifying function as a trademark.   Trade dress is defined as the design and shape of the materials in which a product is packaged.  The design and shape of the product itself may also be considered a form of trade dress.

Depending upon the circumstances, trade dress may be granted trademark registration if it is inherently distinctive on its “face.”  Section 2f of the Lanham Act applies where a generally-not-protectable trademark has acquired trademark protection eligibility (secondary meaning) due to widespread public recognition of the mark as a brand and/or with the long and continuous use of the mark.

Those readers who live in South Florida or have visited the area have likely driven by or even visited the Seminole Tribe’s Hard Rock Hotel and Casino with its guitar-shaped facilities.  On May 25, 2023,  in In re Seminole Tribe of Florida, the Trademark Trial and Appeal Board (TTAB), in a precedential opinion, held that the Tribe’s three-dimensional building in the shape of a guitar (part of the Tribe’s Hardrock Casino and Hotel) is inherently distinctive.  The building’s shape is thus eligible for trademark registration for the Tribe’s casino services under international classification (IC) 41 and hotel, restaurant, and bar services under IC 43.   Application SN 87890892, available at, describes the mark as a “three-dimensional building in the shape of a guitar” and includes a black and white drawing.

In finding in favor of the Tribe, the TTAB relied on the U.S. Supreme Court’s decisions in Two Pesos, Inc. v. Taco Cabana, Inc. and Walmart Stores v. Samara Bros.  Both cases were trademark infringement lawsuits involving unregistered trade dress marks. Two Pesos involved an infringement lawsuit for the usage of Taco Cabana’s distinctive trade dress featuring the décor of a Mexican restaurant.   The Supreme Court held the “proof of secondary meaning is not required to prevail on a claim in an action for infringement of unregistered trade dress under § 43(a) of the Lanham Act where the trade dress at issue is inherently distinctive. . .”   Taco Cabano’s trade dress was found to be inherently distinctive and subject to protection as a common law trademark.

In Wal-mark Stores, the Supreme Court further clarified its trade dress jurisprudence by distinguishing “product design” trade dress from “product packaging” trade dress.  Here, Samara Brothers sued Wal-mart for selling knockoffs of the plaintiff’s garments, a line of spring and summer one-piece seersucker outfits featuring decorative appliques.   The Court found that the garments represented “product design” trade dress wherein a product’s design is distinctive, and therefore protectable, only upon a showing of secondary meaning.”  In reaching its decision, the Court distinguished the “product packaging” trade dress or “tertium quid” at issue in Two Pesos, from the “product design” trade dress at issue in Samara Bros.  The Samara Court further stated that the décor trade dress in Two Pesos is either product packaging, which is normally taken by the consumer to indicate origin, or some tertium quid that is akin to product packaging and has no bearing on the present case.

The distinction between product design and product packaging makes sense on the basis of trademark law’s consumer-focused purpose. As Justice Scalia stated in the Samara opinion:

It seems to us that [product] design, like color, is not inherently distinctive.  The attribution of inherent distinctiveness to certain categories of word marks and product packaging derives from the fact that the very purpose of encasing it in distinctive packaging, is most often to identify the source of the product.  Although the words and packaging can serve as subsidiary functions . . . their predominant function remains source identification.  Consumers are therefore predisposed to regard those symbols as indication of the producer, which is why such symbols “almost automatically tell a customer that they refer to a brand,” . . . and “immediately signal a brand or a product source. . . .”

In re The Seminal Tribe at 11 quoting Samara.

In finding for the Seminole Tribe, the TTAB held that the Guitar Design is akin to product packaging and inherently distinctive for the services specified in the application. The TTAB also emphasized that trademark eligible trade dress must be unique in the relevant industry, in this case the hotel and casino industries.  Here, the TTAB cited its 2015 decision in In re Frankish Enters. Ltd. which involved the trade dress of the “fanciful, prehistoric animal design” of the cab of monster truck exhibitions.  Finding that the monster design was akin to product packaging and therefore inherently distinctive, the Frankish Enters. Board also emphasized the uniqueness of the applicant’s monster truck design which was readily distinguishable from all other monster truck designs of record.   In re Seminole Tribe of Florida at 16.  Similarly, the uniqueness of the Guitar Design in the hotel and casino service industries makes it inherently distinctive on its face.

Side Note:  The examining attorney had approved registration of the guitar-shaped hotel under Section 2f but the Seminole Tribe sought registration on inherently distinctive grounds rather than on acquired distinctiveness grounds.  Either way, in this particular case, the distinctive shape of the hotel clearly made it eligible for both types of registration.  There may be some strategic legal reasons for seeking registration of  product-package trade dress involving an obviously inherently distinctive design even where 2f registration would be granted.  Trademark attorneys should discuss such strategies with the client since appeals do cost money.  In another May 2023 hotel trade dress case, the TTAB held that a rectangular-shaped hotel could not be registered even on 2f’s acquired distinctiveness grounds. .  In re Palaci Del Rio, IncSee application SN 88412764 for a drawing of the hotel.  A comparison between The Seminole Tribe’s guitar-shaped hotel and the rectangular-shaped hotel clearly demonstrates why the Seminole Tribe’s hotel was accorded protection as being inherently distinctive.

In conclusion, trade dress is another avenue for obtaining trademark protection and building brand recognition.  One thing to note, however, is that trademark registration will not be granted if the trade dress has an associated  functionality.   Click here for a blog on trade dress and functionality entitled “From Medical Test Tube Caps to Bourbon Bottles – Getting a Grip on Trademark Functionality.”


Copyrighted 2023

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