Amazing Spaces, Inc. v. Metro Mini Storage
608 F.3d 225 (2010)
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Rule of Law:
A common, ubiquitous symbol used as ornamentation is not inherently distinctive and therefore cannot be protected as a service mark under the Lanham Act unless it has acquired secondary meaning. Widespread use of a symbol by numerous third parties demonstrates that it does not serve as an indicator of origin for a particular business.
Facts:
- Amazing Spaces, Inc., and Metro Mini Storage are competing self-storage businesses in Houston, Texas.
- Beginning in 1998, Amazing Spaces built its facilities featuring a raised, five-pointed star set within a circle (the 'Star Symbol') on the gabled roofs.
- Amazing Spaces used this Star Symbol in its architecture and advertising, telling customers to 'look for the star.'
- Landmark Interest Corporation, which built facilities for Amazing Spaces, also constructed facilities for Metro Mini Storage that featured a similar star-in-a-circle design.
- Amazing Spaces demanded that Metro cease using the star design, claiming it caused customer confusion, but Metro refused.
- The five-pointed star in a circle is a common symbol associated with Texas and was used by numerous other businesses, including at least 28 other self-storage locations.
Procedural Posture:
- Amazing Spaces, Inc. sued Metro Mini Storage and Landmark Interest Corporation in the U.S. District Court for the Southern District of Texas for service mark infringement and other claims.
- Metro filed a counterclaim seeking cancellation of Amazing Spaces's federal service mark registration for the Star Symbol.
- The district court limited the initial discovery phase to the threshold issue of the 'trademarkability' of the Star Symbol.
- Metro moved for summary judgment, arguing the mark was not inherently distinctive and lacked secondary meaning.
- The district court granted summary judgment in favor of Metro, concluding the Star Symbol was not a legally protectable mark and dismissing all of Amazing Spaces's claims with prejudice.
- Amazing Spaces, as the appellant, appealed the district court's judgment to the U.S. Court of Appeals for the Fifth Circuit.
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Issue:
Is a common symbol, such as a five-pointed star in a circle, inherently distinctive enough to be a legally protectable service mark when it is widely used as ornamentation by numerous other businesses in the same industry and geographic area?
Opinions:
Majority - King, J.
No, a common symbol widely used as ornamentation is not inherently distinctive and cannot be a legally protectable service mark without proof of secondary meaning. The court determined that the traditional Abercrombie test (generic, descriptive, suggestive, arbitrary, fanciful) is ill-suited for non-word marks like symbols and designs. Instead, applying the Seabrook Foods test, the court focused on whether the symbol was so 'unique, unusual or unexpected' in its market that consumers would automatically perceive it as an indicator of origin. Here, the 'ubiquitous nature' of the Texas star, used by countless businesses as decoration, precludes it from being inherently distinctive. Furthermore, the court found Amazing Spaces failed to raise a genuine issue of material fact regarding secondary meaning, as it provided no survey evidence and its other evidence of advertising and confusion was weak and related more to the building's overall trade dress than the Star Symbol itself.
Analysis:
This decision solidifies the principle that commonplace or ornamental symbols cannot be monopolized as trademarks without a strong showing of acquired distinctiveness. It demonstrates the judiciary's reluctance to grant exclusive rights to symbols that are deeply embedded in regional culture and public use. The court's preference for the 'Seabrook Foods' test over the 'Abercrombie' spectrum for non-word marks provides important guidance for future cases involving designs, shapes, and symbols, shifting the focus from abstract categorization to the symbol's actual perception in the marketplace. The ruling serves as a caution to businesses against adopting widely used symbols as source identifiers, as the burden to prove secondary meaning for such marks is exceptionally high.
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