Can you trademark a building design? You can if the building in question is the Empire State Building. In the film classic King Kong, the iconic art deco building is the site of a titanic battle between Kong and the military planes that battle to succumb the creature. Now, in a recent non-precedential decision by the Trademark Trial and Appeal Board, the owner of rights in the EMPIRE STATE BUILDING mark and building logo design succeeded in opposing an application to register the following logo design for beer and other malt beverages:

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The Opposer, ESRT Empire State Building LLC, owns federal registrations for the word mark EMPIRE STATE BUILDING for observation deck, sightseeing and real estate services, as well as design mark registrations for the same services for this two dimensional depiction of the building exterior, based on a claim of acquired distinctiveness:

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ESRT opposed the application to register the NYC BEER logo design on the grounds of trademark dilution, likelihood of confusion and false suggestion of a connection with ESRT. The TTAB agreed that the NYC BEER logo was likely to dilute ESRT’s design mark. A successful claim for dilution involves a showing that your mark is famous. As the TTAB put it, “a famous mark is one that has become a ‘household name.’” The applicant conceded that ESRT’s marks were famous, and the opposer introduced evidence that the Empire State Building has been featured in hundreds of films, not only King Kong but also An Affair to Remember and Sleepless in Seattle. The building’s observation deck is visited by millions of guests each year and opposer and its predecessors had sold a wide variety of merchandise bearing the EMPIRE STATE BUILDING mark and building design since 1931. The building gift shop sells non-alcoholic beverages as well as wine and champagne. Under these circumstances, the Board easily concluded that the mark and design were famous.

Another important factor in the analysis of dilution is the degree of similarity between the marks at issue. On this point, it didn’t help the applicant that as part of its trademark application, it described its mark as featuring “a building resembling the Empire State Building.” Even though applicant’s mark included additional wording and design elements, the Board found that these aspects did not diminish the similarity of the building design in the NYC Beer logo to ESRT’s design mark. Having found that the NYC Beer logo was likely to dilute ESRT’s design mark, the Board declined to analyze the additional grounds of likelihood of confusion and false suggestion of a connection with opposer.

The case is unusual, and not likely to set in motion a widespread trend in protecting building exteriors. Very few buildings are quite as famous as the Empire State Building, registered in the USPTO and the subject of an extensive merchandising program. It was also interesting that the TTAB accepted opposer’s evidence that it had used its registered logo design as a mark since 1931. While construction of the skyscraper was completed in 1930, it’s one thing to have a building standing on the street for all to see, and another to have a two dimensional depiction of the building profile used as a trademark in connection with goods and services in accordance with the Lanham Act.