Amazing Spaces, Inc. v. Metro Mini Storage

608 F.3d 225 (2010)

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Nature of the Case

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Facts

P and D are rival self-storage businesses in Houston, Texas. P claims, in connection with providing storage services, exclusive use rights in a design consisting of a raised, five-pointed star set within a circle. D uses a similar star design on its buildings. P sued D in federal district court. P brought a federal claim for service mark infringement under the Lanham Act and state law claims for common law infringement and statutory dilution. P brought federal claims for trade dress infringement under the Lanham Act and copyright infringement and state law claims for common law unfair competition and statutory dilution. P has used the Star Symbol in its facilities' architecture and its advertising, since at least April 1998. The Star Symbol is registered as a service mark with the PTO. P engaged a company to perform a database search to determine whether other storage companies had registered a similar star mark; the search revealed no such registrations. D also has facilities that feature a similar five-pointed-star-in-a-circle design (but not raised) on their gables. P claims confusion among its customers, who mistook D's facilities for new P facilities. D refused to cease using its star design. P sued D and D counterclaimed that the trademark should be canceled for invalidity. D argued that the Star Symbol was not inherently distinctive and that Amazing Spaces could not establish that it had acquired secondary meaning. D presented evidence that in at least 63 different industries and businesses on buildings, property, and as part of logos and on the buildings of 'at least 28 other self-storage locations' used the same star symbol. The court used the Abercrombie test: marks are 'classified in categories of generally increasing distinctiveness [:] (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.' It also used the Seabrook Foods, test: 'in determining whether a design is arbitrary or distinctive': [1] whether it was a 'common' basic shape or design, [2] whether it was unique or unusual in a particular field, [3] 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 [4] whether it was capable of creating a commercial impression distinct from the accompanying words. The court determined that the Star Symbol was not generic or a common geometric shape. It was not descriptive of any 'characteristic or quality of self-storage service[s].' It concluded that the Star Symbol was not suggestive. The court then concluded under Abercrombie that the star mark cannot be classified as arbitrary or fanciful unless it is inherently distinctive so as to serve as a source identifier for P.' Under Seabrook, the court determined that 'regardless of whether P was the first self-storage 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 self-storage business, including P.' It held that the ubiquitous nature of the five-pointed star set within a circle precludes a finding that it is inherently distinctive or that it can serve as an indicator of origin for a particular business. The court determined that the Star Symbol was not generic or a common geometric shape. It was not descriptive of any 'characteristic or quality of self-storage service[s].' It concluded that the Star Symbol was not suggestive. The court then concluded under Abercrombie that the star mark cannot be classified as arbitrary or fanciful unless it is inherently distinctive so as to serve as a source identifier for P.' Under Seabrook, the court determined that 'regardless of whether P was the first self-storage 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 self-storage business, including P.' It held that the ubiquitous nature of the five-pointed star set within a circle precludes a finding that it is inherently distinctive or that it can serve as an indicator of origin for a particular business. The court dismissed P’s action and P appealed.