1301.02(c) Three-Dimensional Service Marks
The three-dimensional configuration of a building is registrable as a service mark only if it is used in such a way that it is or could be perceived as a mark. Evidence of use might include menus or letterhead that show promotion of the building’s design, or configuration, as a mark. See In re Lean-To Barbecue, Inc., 172 USPQ 151 (TTAB 1971); In re Master Kleens of Am., Inc., 171 USPQ 438 (TTAB 1971); In re Griffs of Am., Inc., 157 USPQ 592 (TTAB 1968). Cf. Fotomat Corp. v. Cochran, 437 F. Supp. 1231, 194 USPQ 128 (D. Kan. 1977); Fotomat Corp. v. Photo Drive-Thru, Inc., 425 F. Supp. 693, 193 USPQ 342 (D.N.J. 1977).
A three-dimensional costume design may function as a mark for entertainment services. See In re Red Robin Enters., 222 USPQ 911 (TTAB 1984).
However, the Board has found that a mark consisting of a three-dimensional cylindrical cast of female breasts and torso did not function as a mark for applicant’s association, charitable fundraising, and educational services in the field of breast cancer. In re Keep A Breast Found., 123 USPQ2d 1869, 1880 (TTAB 2017). The evidence indicated that the mark was being used as part of applicant’s services to assist women to make such casts. Thus, the cast would be perceived as part of the services, rather than as a mark designating the source of the services. Id.
Generally, a photograph is a proper specimen of use for a three-dimensional mark. However, photographs of a building are not sufficient to show use of the building design as a mark for services performed in the building if they only show the building in which the services are performed. The specimen must show that the proposed mark is used in a way that would be perceived as a mark.
When examining a three-dimensional mark, the examining attorney must determine whether the proposed mark is inherently distinctive. See TMEP §1202.02(b)(ii).