Furniture Mart Land Holdings I, LLC

Trademark Trial and Appeal Board

Sep 12, 2012

No. 77323944 (T.T.A.B. Sep. 12, 2012)

Mailed: 9/12/2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Furniture Mart Land Holdings I, LLC
________

Serial Nos. 77323885 and 77323944
________

Gregory P. Gulia of Duane Morris for Furniture Mart Land
Holdings I, LLC.

Regina C. Hines, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Seeherman, Quinn and Lykos,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Furniture Mart Land Holdings I, LLC filed, on November 7,
2007, two applications to register the mark shown below.

THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Ser. Nos. 77323885 and 77323944

2

The applications include the following statement: “The mark
consists of a trade dress of a three-dimensional building, with
a rectangle façade that, when viewed from the front, is
dissected by the lower half of a half-semicircle, and two arch-
shaped indentures, the matter illustrated by the lines does not
indicate color, but is a feature of the trade dress, which is
the basis of this application.” The services are identified as
follows:
arranging, organizing, and conducting trade
exhibitions, trade conventions, and trade
shows in the field of home and hospitality
furnishings, furniture, home décor and
interior design; promoting the goods and
services of others through the display and
exhibition of goods and manufacturers in the
fields of home and hospitality furnishings,
furniture, home décor and interior design
who display wares at our exhibition and
showroom facilities and the distribution of
printed and audio promotional material (in
International Class 35); and

leasing trade and showroom exhibition space
to manufacturers of goods in the fields of
home and hospitality furnishings, furniture,
home décor and interior design; real estate
services, namely, providing and operating
marketplaces and trade showrooms for sellers
of goods and/or services (in International
Class 36).1

Applicant states in both applications that its proposed mark is
inherently distinctive, but in the alternative, applicant states

1 The Class 35 services are in application Serial No. 77323885 and the Class 36
services are in application Serial No. 77323944; both applications are based
on a claim of first use anywhere and first use in commerce on April 1, 2001.
Ser. Nos. 77323885 and 77323944

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that its proposed mark has acquired distinctiveness under
Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).2
The examining attorney refused registration in each
application under Sections 1, 2 and 45 of the Trademark Act, 15
U.S.C. §§ 1051-1052 and 1127, on the ground that the matter
sought to be registered is not inherently distinctive. The
examining attorney also found the Section 2(f) evidence of
acquired distinctiveness to be insufficient for registration on
the Principal Register.3
When a final refusal in each application issued, applicant
appealed. Applicant and the examining attorney filed briefs.4
The appeals involve common issues of law and fact, and the
records are very similar. Accordingly, the Board will decide
the appeals in this single opinion.
Before turning to the merits of the appeal, we first direct
our attention to a procedural matter. A more detailed review of

2 See discussion on procedural matter, infra.
3 An earlier final refusal in each application was based on the assertion that
the proposed mark, as shown by the specimen, does not function as a service
mark because the specimen did not show the building design “used in a manner
that clearly projects to purchasers the source of applicant’s services as to
be perceived as a mark identifying those services.” In the Office action
responding to applicant’s request for reconsideration of that refusal, the
examining attorney made no mention of the “failure to function” refusal, and
therefore we deem this refusal to have been withdrawn.
4 After applicant filed its brief, the Board granted a request for remand to
allow applicant to submit additional Section 2(f) evidence. The examining
attorney was not persuaded by the evidence, and the final refusal was
maintained. Applicant was allowed an opportunity to file a supplemental
brief, but no such brief was filed. We also note that applicant appointed
new counsel to represent it in this appeal at that time; however the new
attorney never requested time for additional briefing. The examining
attorney’s brief was mailed to new counsel. Applicant’s new counsel did not
file a reply brief.
Ser. Nos. 77323885 and 77323944

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the relevant prosecution history referenced above helps to
explain the development of the specific issues on appeal as
framed by applicant and the examining attorney in their briefs.
The examining attorney originally issued a final refusal of
registration on the ground that the matter sought to be
registered, as used on the specimens, did not function as a
service mark. In response to applicant’s request for
reconsideration of that refusal, the examining attorney, in the
next Office action, essentially withdrew this refusal and raised
a new refusal, namely, that applicant’s proposed mark comprised
nondistinctive trade dress that would not be perceived as a
service mark but only as decoration or ornamentation. The
examining attorney also noted applicant’s remark that its
proposed mark had acquired distinctiveness, but she stated that
she “does not find that applicant has shown acquired
distinctiveness sufficient enough to create a connection between
the trade dress design of the mark and the services being
rendered there.” In response, applicant filed a paper that
begins by stating that the application “has been amended,”
followed by a Section 2(f) claim that the mark has become
distinctive of the services based on at least five years of
substantially exclusive and continuous use; applicant made no
mention of inherent distinctiveness. The examining attorney
then issued an Office action wherein she stated that applicant’s
Ser. Nos. 77323885 and 77323944

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response was incomplete “because the applicant did not provide
the necessary evidence to show acquired distinctiveness under
Section 2(f).” Applicant responded by stating that it
“previously claimed acquired distinctiveness” based on use for
more than five years, and that its assertion of use constitutes
“evidence”; applicant also accompanied this response with
additional Section 2(f) evidence. Applicant argued that it
established acquired distinctiveness and “requests the Examiner
accept its application for publication.” Applicant made no
mention of inherent distinctiveness; in other words, applicant
did not make its claim of acquired distinctiveness in the
alternative. Nonetheless, in the next Office action, the
examining attorney began by indicating that “[t]he
Nondistinctive Trade Dress for Services [i.e., the decoration or
ornamentation] Refusal and requirement for proof of Acquired
Distinctiveness [are] now made FINAL.” The examining attorney
reiterated her finding that “the applied-for mark is not
inherently distinctive because the applicant has not shown how
the special configuration of the building conveys an immediate
commercial impression that consumers seek the services of the
applicant because of the design of the building as represented
by the mark. The applicant, therefore, claims 2(f)....the
examining attorney does not find that the applicant has shown
acquired distinctiveness sufficient enough....” Applicant filed
Ser. Nos. 77323885 and 77323944

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a request for reconsideration of this final refusal, maintaining
that its mark had acquired distinctiveness and submitting a
declaration with additional information; applicant again did not
mention inherent distinctiveness. The examining attorney denied
the request for reconsideration: “As incorporated by reference
herein, the Non-distinctive Trade Dress refusal remains
relevant...[and] the examining attorney finds that the 2(f)
claim of acquired distinctiveness is unsubstantiated.”
Applicant then filed its appeal brief, along with a request
to suspend the appeal and remand the application to the
examining attorney for consideration of additional Section 2(f)
evidence. In the brief, applicant argued both that its trade
dress is inherently distinctive and “alternatively” that the
trade dress has acquired distinctiveness. The examining
attorney agreed to a remand, and she considered the additional
evidence. In denying the request for reconsideration and
adhering to her positions, the examining attorney stated as
follows: “The FINAL refusal based on the Non-distinctive Trade
Dress for Services refusal is MAINTAINED and incorporated by
reference herein”; and “The FINAL refusal for the requirement
for sufficient proof of Section 2(f) Acquired Distinctiveness is
also MAINTAINED.” After the appeal was resumed, the examining
attorney filed her brief wherein she recounted the prosecution
history, culminating in the following: “[T]he refusal to
Ser. Nos. 77323885 and 77323944

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register under Trademark Act Sections 1, 2 and 45 for
Nondistinctive Trade Dress of packaging and denying the claim
for registration on the principal register under § 2(f) acquired
distinctiveness was made final and this appeal ensued.” The
examining attorney also set forth the issues on appeal: “The
issues on appeal are whether the applicant’s trade dress of the
building design is inherently distinctive and can be registered
on the Principal Register and if not, whether the applicant has
shown that the mark has acquired distinctiveness under Trademark
Act Section 2(f).” The examining attorney went on to discuss
both issues in her brief.
We are perplexed by the fact that inherent distinctiveness
remains an issue in this appeal. For procedural purposes, a
claim of distinctiveness under Section 2(f), whether made in the
application as filed or in a subsequent amendment, may be
construed as a concession that the matter to which it pertains
is not inherently distinctive and, thus, not registrable on the
Principal Register absent proof of acquired distinctiveness.
For the purposes of establishing that the subject matter is not
inherently distinctive, the examining attorney may rely on this
concession alone. Once an applicant has claimed that the matter
has acquired distinctiveness under Section 2(f), the issue to be
determined is not whether the matter is inherently distinctive
but, rather, whether it has acquired distinctiveness. See,
Ser. Nos. 77323885 and 77323944

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e.g., Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d
1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); and In re Cabot
Corp., 15 USPQ2d 1224, 1229 (TTAB 1990).
Claiming distinctiveness in the alternative, however, is
not an admission that the proposed mark is not inherently
distinctive. Unlike the situation in which an applicant
unequivocally amends its application to seek registration under
Section 2(f), an amendment and claim of acquired distinctiveness
made in the alternative does not constitute a concession that
the matter sought to be registered is not inherently
distinctive. See In re Thomas Nelson, Inc., 97 USPQ2d 1712,
1713 (TTAB 2011); and In re E S Robbins Corp., 30 USPQ2d 1540,
1542 (TTAB 1992). When an applicant claims acquired
distinctiveness in the alternative, the examining attorney must
treat separately the questions of: (1) the underlying basis of
refusal (in this case, the asserted lack of inherent
distinctiveness); and (2) assuming the matter is determined to
be at least registrable on a showing of acquired
distinctiveness, whether acquired distinctiveness has been
established. In the event of an appeal on both grounds, the
Board will use the same analysis, provided the evidence
supporting the Section 2(f) claim is in the record and the
alternative grounds have been considered and finally decided by
the examining attorney. In re Harrington, 219 USPQ 854, 855 n.1
Ser. Nos. 77323885 and 77323944

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(TTAB 1983). See TBMP § 1215 (3rd ed. 2012); and TMEP
§ 1212.02(c) (8th ed. 2011). It is the applicant’s
responsibility to make clear that it is taking alternative
positions. TBMP § 1215, and cases cited at note 2.
In the present case, applicant’s original amendment to
claim acquired distinctiveness clearly was not made in the
alternative, but rather was an unconditional Section 2(f) claim.
At that point, the examining attorney could have considered the
amendment to be a concession that the proposed mark is not
inherently distinctive. Rather than follow this well-
established practice, however, the examining attorney
inexplicably continued to maintain that the mark was not
inherently distinctive, setting forth both a lack of inherent
distinctiveness and a lack of acquired distinctiveness as two
separate refusals. And, while applicant, after amending its
application to claim the benefits of Section 2(f), did not
mention inherent distinctiveness again until its appeal brief,
the examining attorney continued to discuss both issues as if
the Section 2(f) claim were made in the alternative (even though
clearly it was not).
Although applicant did not originally assert its Section
2(f) claim in the alternative, the examination history reveals
that the examining attorney essentially treated the claim as an
alternative one. That is, the examining attorney did not treat
Ser. Nos. 77323885 and 77323944

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applicant’s claim of acquired distinctiveness as a concession
that the matter sought to be registered is not inherently
distinctive. See TMEP § 1212.02(c). Because of the way
applicant and the examining attorney handled the issue,
especially given their mutual characterization and discussion of
both issues in the briefs, we will consider the claim of
acquired distinctiveness to be one made in the alternative. We
frankly do this with some reluctance, but the parameters of this
appeal were dictated by applicant’s and the examining attorney’s
actions, and in particular, by the examining attorney’s decision
to not treat the Section 2(f) amendment as a concession that the
building design is not inherently distinctive. See In re
Binion, 93 USPQ2d 1531, 1538 (TTAB 2009) (although applicant did
not couch his Section 2(f) claim of acquired distinctiveness in
the alternative when he argued against surname refusal, because
applicant and the examining attorney treated the claim as an
alternative one, the Board did as well); and In re Central
Sprinkler Co., 49 USPQ2d 1194, 1195 n.3 (TTAB 1998) (Board
considered registrability on both Principal and Supplemental
Registers even though applicant’s amendment to the Supplemental
Register was originally not made in the alternative, noting that
the examining attorney continued to refuse registration on both
registers, and subsequent papers of both applicant and examining
attorney, including request for reconsideration and decision on
Ser. Nos. 77323885 and 77323944

11

that request, discussed the amendment as being in the
alternative).
We now turn to the merits of the issues on appeal, namely
inherent distinctiveness and acquired distinctiveness.
Applicant claims that its proposed mark is inherently
distinctive because it is not a common basic shape or design,
but rather is “outlandish” and unique in its field; the proposed
mark is not a commonly adopted and well-known form of
ornamentation for applicant’s type of services as no other
buildings like applicant’s exist; and because of the unique and
unusual design of the proposed mark, it is capable of creating a
commercial impression distinct from the accompanying words WORLD
MARKET CENTER.5 In the alternative, applicant argues that its
proposed mark has acquired distinctiveness in the minds of the
relevant purchasing public. In support of this alternative
Section 2(f) claim, applicant submitted the declarations (and
accompanying exhibits) of its attorneys, wherein certain facts
about applicant’s facility and applicant’s promotional efforts
are set forth. Among the exhibits is a “survey” completed by
over 1,000 visitors to applicant’s facility. Applicant also
submitted excerpts of its website showing photographs of the

5 Applicant’s ownership of several registrations of marks such as WORLD MARKET
CENTER LAS VEGAS, WMC, LAS VEGAS MARKET and LAS VEGAS DESIGN CENTER is
irrelevant to the registrability of the matter now sought to be registered.
Ser. Nos. 77323885 and 77323944

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building, and copies of third-party registrations of marks
comprising building designs.6
The examining attorney maintains that applicant’s building
design is a rather commonplace rectangle design that fails to
create a unique or unusual commercial impression for a showroom
and trade show facility. According to the examining attorney,
the proposed mark, consisting of a conventional building in a
rectangle shape with a large semi-circle design on the front, is
a mere refinement of a well-known architectural form for trade
show and convention center facilities. The examining attorney
also points to the prominent display of the words “World Market
Center” on the building and in advertising, contending that the
design of the building does not create a commercial impression
separate from the accompanying words. As to the alternate
Section 2(f) claim, the examining attorney states that while
applicant’s World Market Center may be known for its home
furnishing expos and trade shows, this association is not based
upon the architectural design of the building.
We start with the premise that a building’s façade may
function as a mark. See generally J.T. McCarthy, McCarthy on
Trademarks and Unfair Competition § 7:100 (4th ed. 2012). And,

6 Only one of the registrations, namely Reg. No. 2048586, was timely made of
record. The remaining three registrations were not submitted until their
attachment to applicant’s appeal brief. The examining attorney, in her
brief, objected to the untimely submission. The objection is sustained.
Trademark Rule 2.142(d); and TBMP §§ 1203.02(e) and 1207.01.
Ser. Nos. 77323885 and 77323944

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of course, the Supreme Court has ruled that trade dress other
than product design may be inherently distinctive. Two Pesos
Inc. v. Taco Cabana Inc., 505 U.S. 763, 23 USPQ2d 1081 (1992).
Thus, we first focus our attention on whether applicant’s
building design as shown in its drawing is inherently
distinctive for applicant’s services.
In determining whether a design is arbitrary or
distinctive, the Board considers the following factors:
Whether the subject matter sought to be
registered is a “common” basic shape or
design;

Whether the subject matter sought to be
registered is unique or unusual in a
particular field;

Whether the subject matter sought to be
registered is a mere refinement of a
commonly-adopted and well-known form or
ornamentation for a particular class of
goods or services viewed by the public as a
dress or ornamentation for the goods; and

Whether the subject matter sought to be
registered is capable of creating a
commercial impression distinct from the
accompanying words.

Seabrook Foods, Inc. v. Bar-Well Foods Limited, 568 F.2d 1342,
196 USPQ 289, 291 (CCPA 1977). See also In re Chippendales USA
Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1684 (Fed. Cir. 2010); and
In re Hudson News Co., 39 USPQ2d 1915 (TTAB 1996), aff’d per
curiam, 114 F.3d 1207 (Fed. Cir. 1997).
Ser. Nos. 77323885 and 77323944

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“Whether an asserted mark is inherently distinctive
involves both a legal question as to the correct standard to
apply and a factual determination. ‘The issue of inherent
distinctiveness is a factual determination made by the Board.’”
[citations omitted]. In re Chippendales USA Inc., 96 USPQ2d at
1683-84. “It is well established that the PTO has the burden to
establish a prima facie case of no inherent distinctiveness.”
In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629, 1630
(Fed. Cir. 2003). On appeal, we must consider whether the
examining attorney has made a prima facie case that the subject
matter sought to be registered is not inherently distinctive
and, if so, whether applicant has submitted sufficient evidence
to rebut that prima facie case. Id. at 1631. The question of
inherent distinctiveness rests on whether the public in the
relevant market would view the building design as a source-
identifier for applicant’s services. The burden on the
examining attorney, in meeting a prima facie case, is to
establish a “reasonable predicate” for the position that the
subject matter is not inherently distinctive. Id.
Here is the totality of the examining attorney’s argument
on this issue:
First, the application’s three dimensional
drawing, mark description and advertisements
portray the building as a common rectangular
shape for a showroom or trade complex.
Second, the applicant’s specimens and
Ser. Nos. 77323885 and 77323944

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website evidence show the World Market
Center Las Vegas as a large building.
However, the building’s design is rather
commonplace and does not create a unique or
unusual commercial impression for a showroom
and trade complex. In order to be
inherently distinctive, the unusual and
unique nature of the applicant’s building
façade should be so prominent that
purchasers readily identify the source of
applicant’s services. The commercial
impression created by the overall design and
façade of the applicant’s building lacks
uniqueness. The mark is of a conventional
building in a rectangular shape with a large
semi-circle design on the front of the
building. Thus, the building is a mere
refinement of a commonly adopted and well-
known architectural form for trade complexes
or convention centers and would not be
inherently regarded as a source indicator as
identified in the third Seabrook factor.
[citations omitted]. Lastly, the
architectural design of the building does
not show how it creates a commercial
impression for the source of the applicant’s
services distinct from the accompanying
words “World Market Center.” The
applicant’s advertisements and website show
that the wording “World Market Center” is
prominently displayed on the building and
frequently highlighted in relation to the
building. Since the building does not
appear inherently distinctive for its
architectural design, the dominance of the
persuasive advertising combined with wording
“World Market Center” creates the commercial
impression for this venue. Thus, it is the
wording in the applicant’s advertising in
relation to the building that provides the
connection to the services at the “World
Market Center Las Vegas” and not the image
of the building itself.

(Brief, unnumbered pp. 6-7).
Ser. Nos. 77323885 and 77323944

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At the outset it needs to be pointed out that the examining
attorney did not submit a single piece of evidence in support of
her position that the proposed mark is not inherently
distinctive. In applying the Seabrook test for inherent
distinctiveness, the examining attorney’s mere argument, without
any supporting evidence, fails to make out a prima facie case
that consumers would not perceive and rely on the building
design at issue as an indication of source for applicant’s
services. Specifically, the record is devoid of any evidence to
show that the subject matter sought to be registered is a common
design, that the building design is not an unusual one, that the
design is simply a refinement of a well-known design or
ornamentation, or that the proposed mark fails to function as a
mark without the accompanying words “World Market Center.”
In reaching this decision, we fully recognize and
appreciate the Federal Circuit’s observation that “the PTO is an
agency of limited resources.” Id. at 1632. However, mere
opinion or argument is no substitute for evidence. Martahus v.
Video Duplication Services Inc., 3 F.3d 417, 27 USPQ2d 1846,
1849 (Fed. Cir. 1993) (“arguments unsubstantiated by record
evidence are suspect at best”). So as to be clear, there is not
even a single piece of evidence bearing on the Seabrook factors
in support of the examining attorney’s position that the
proposed mark is not inherently distinctive.
Ser. Nos. 77323885 and 77323944

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Accordingly, the examining attorney has failed to make a
prima facie showing that the building design sought to be
registered is not inherently distinctive. In view of this
failure, we need not reach the issue of acquired
distinctiveness.
Decision: The refusal to register in each application is
reversed.