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Amazing Spaces, Inc. v. Metro Mini Storage - 608 F.3d 225 (5th Cir. 2010)

Rule:

Trademark and service mark infringement claims are governed by the Trademark Act of 1946, the Lanham Act, 15 U.S.C.S. § 1051 et seq. There are two elements to a successful infringement claim under the Lanham Act. The plaintiff must first establish ownership in a legally protectible mark, and second, show infringement by demonstrating a likelihood of confusion. To succeed in a trademark infringement claim, a party must first show that it has a protectable right in the mark and, second, show that there is a likelihood of confusion between the marks. 

Facts:

Plaintiff Amazing Spaces and Defendant Metro compete directly with each other in providing self-storage services in Houston, Texas. Defendant Landmark has built facilities for both Amazing Spaces and Metro. Amazing Spaces claims, in connection with providing storage services, exclusive use rights in a design consisting of a raised, five-pointed star set within a circle (Star Symbol).  Metro uses a similar star design on its buildings. In response to this use, Amazing Spaces brought suit against Metro and Landmark in federal district court, alleging federal and state causes of action.  With respect to the Star Symbol alone, Amazing Spaces brought a federal claim for service mark infringement under the Lanham Act and state law claims for common law infringement and statutory dilution. With respect to its trade dress, of which the Star Symbol comprises one element, Amazing Spaces 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. The district court concluded that the Star Symbol was not a legally protectable mark and dismissed Amazing Spaces's claims on summary judgment.

Issue:

Was plaintiff storage company's Star Symbol design a valid service mark?

Answer:

No

Conclusion:

On appeal, the Court of Appeals for the Fifth Circuit affirmed, in part, the judgment dismissing plaintiff Amazing Space's service mark infringement claims. The appellate court reversed, in part, the dismissal of Amazing Space's claims relating to infringement of its trade dress and remanded the case to the district court for further proceedings, concluding that the district court erred in not permitting Amazing Spaces the opportunity to introduce evidence relating to the trade dress claims. The court also noted that to protect the overall appearance of its facilities as trade dress, it need not establish that its star symbol was legally protectable. The district court erred by limiting discovery to the issue of the trademarkability of the star symbol.

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