Empire State Building Beats Beer Company in Trademark Dispute

Most people are familiar with trademarks in the form of words and logos, like “Coca-Cola” and the Nike “swoosh.” However, a building design can also be a trademark.

In a recent decision, the Trademark Trial and Appeal Board (TTAB) prohibited a beer maker from registering a trademark for beer that included an image of the Empire State Building:

The Building

ESRT Empire State Building, L.L.C. is the owner of the Empire State Building and of two related trademarks — for the mark EMPIRE STATE BUILDING and for an image of the building itself.

As the TTAB noted, the Empire State Building is:

• a distinctively-styled art deco skyscraper featuring multiple setbacks, that was completed in 1931 and located in the heart of the City of New York;
• For 40 years, the Empire State Building was the tallest building in the world, and presently is the fifth tallest building in the United States;
• The Empire State Building has been featured in hundreds of motion pictures and television shows, including King Kong, An Affair to Remember and Sleepless in Seattle.
• The Empire State Building gift shop sells wine and champagne as well as non-alcoholic beverages.

Dilution

ESRT claimed that registration of the applicant’s mark would cause injury by “dilution by blurring.”

The Trademark Act defines dilution by blurring as:

association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.

According to the TTAB,
Dilution by blurring occurs when a substantial percentage of consumers, upon seeing the junior party’s use of a mark on its goods, are immediately reminded of the famous mark and associate the junior party’s use with the owner of the famous mark, even if they do not believe that the goods come from the famous mark’s owner.

In other words, you can’t sell “Coca-Cola”-brand sneakers without permission even if nobody would think they were made by the Coca-Cola company.

Factors

The Trademark Act lists six factors a court can consider when determining whether a new trademark is likely to cause dilution by blurring:

• The degree of similarity between the mark or trade name and the famous mark.
• The degree of inherent or acquired distinctiveness of the famous mark.
• The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
• The degree of recognition of the famous mark.
• Whether the user of the mark or trade name intended to create an association with the famous mark.
• Any actual association between the mark or trade name and the famous mark.

The TTAB found that these factors supported a finding of dilution and refused registration of the beer maker’s mark.

Takeaway

As this case shows, if you’re considering adopting a trademark that includes an image of a famous building, you need to make sure that the building owner doesn’t already own the trademark for the image of the building.