can boast of a famous landmark -- Notre Dame has the Grotto, Duke has its
University Chapel, UC San Diego has the Geisel Library, the University
of Wisconsin has the Red Gym. Of the more famous, the University of Texas has
the UT Tower, a 307-foot clock tower with an observation deck overlooking the campus
and the city of Austin.
As a landmark, the UT Tower is inherently valuable to the
University of Texas, which has taken steps to capitalize on this value. The University has registered marks depicting the UT Tower and
has used these marks in connection with its educational services, athletics
programs, and various products and services.
The University of Texas recently filed a lawsuit accusing Tower
Car Wash of trademark infringement in erecting an alleged replica of the UT
Tower. The Car Wash, which features an orange-colored tower in the
"T" of its logo, had erected a 60-foot tower with an orange lighting
system similar to the UT Tower's lighting system.
View the complaint filed in Univ. of Texas vs. Tower Car Wash, 111-cv-00125 (W.D. Tex. Feb. 16
The case raises issues similar to those raised in Rock & Roll Hall of Fame & Museum v.
Gentile Prods., 934 F. Supp. 868 (N.D. Ohio 1996) rev'd, 134
F.3d 749, 755 (6th Cir. Ohio 1998). In that case, the Rock and Roll Hall of
Fame and Museum obtained a preliminary injunction to prevent a photographer
from selling posters incorporating the Museum's name and a photograph of its
building. However, the 6th Circuit reversed, holding that:
In reviewing the Museum's
disparate uses of several different perspectives of its building design, we
cannot conclude that they create a consistent and distinct commercial
impression as an indicator of a single source of origin or sponsorship.
To be more specific, we cannot conclude on this record that it is likely that
the Museum has established a valid trademark in every photograph which, like
Gentile's, prominently displays the front of the Museum's building, "no
matter how dissimilar." Even if we accept that consumers recognize the
various drawings and pictures of the Museum's building design as being drawings
and pictures of the Museum, the Museum's argument would still fall short. Such
recognition is not the equivalent of the recognition that these various
drawings or photographs indicate a single source of the goods on which
they appear. Consistent and repetitive use of a designation as an indicator of
source is the hallmark of a trademark. Although the record before us supports
the conclusion that the Museum has used its composite mark in this manner, it
will not support the conclusion that the Museum has made such use of its
In the end, then, we believe that the district court abused its discretion by
treating the "Museum's building design" as a single entity, and by
concomitantly failing to consider whether and to what extent the Museum's use
of its building design served the source-identifying function that
is the essence of a trademark. As we have noted, we find no support for the
factual finding that the public recognizes the Museum's building design, in any
form, let alone in all forms, as a trademark. In light of the Museum's
irregular use of its building design, then, we believe that it is quite
unlikely, on the record before us, that the Museum will prevail on its claims
that Gentile's photograph of the Museum is an infringing trademark use of the
Museum's building design.
For a greater understanding of these issues, read:
1-2 Gilson on Trademarks § 2.11[c]: Nontraditional
"Architectural trade dress is protectable when distinctive and
nonfunctional, and often acts as a service mark for franchises. Owners of
landmark buildings are also getting in on the action, registering those
buildings as service marks . . . ."
1-2A Gilson on Trademarks § 2A.08: Architectural Features
and Building Exteriors
"Courts and the USPTO have long recognized that businesses use the
shape, color and design of buildings and storefronts as source identifiers. Such
features may be protectable trade dress and service marks, typically used by
fast food and . . . ."
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