The Sound of silence

Originally posted 2009-04-24 19:21:32. Republished by Blog Post Promoter

Michael Atkins is beside himself with intellectual-property-enforcement sounders-logofrustration about the use of an image of the Seattle Space Needle — a tall pointy building what they have there instead of skyscrapers — on the logo of some foreign-sport team called the Sounders:

Which of course brings me to trademark law. In particular, what’s up with the Sounders’ use of the Space Needle in its logo? As previously discussed, the Space Needle logo is a registered trademark owned by the Space Needle Corporation. The Space Needle Corporation owns two registered design marks (here and here). Just a few years ago, the company brought suit to enforce rights in its design marks against an onion ring maker that used an altered version of the Space Needle in a print ad (an onion ring replaced the Space Needle’s observation deck). Now it appears the company has licensed use of its design to the Sounders, doesn’t care about this use, or has stopped enforcing its rights.

488px-early_photo_of_seattle_space_needleFar be it from me to needle him over something like this, but I’m surprised Michael doesn’t sound out the possibility that The Space Needle Corporation doesn’t have any rights to license, care about or enforce in the image of its hamburger-on-stilts tower in the first place.

Buildings are not trademarks.  Registering two particular renderings of your building as a trademark doesn’t bootstrap the structure’s likeness into a trademark.  Neither does suing someone else and claiming it is one, unless you get a court to agree with you.

Which it shouldn’t!

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Author:Ron Coleman

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14 Responses to “The Sound of silence”

  1. Jay Wells
    April 26, 2009 at 10:43 am #

    Your comment begs the question. Are the marks similar and are the goods/services so related as to result in a likelihood of confusion? Obviously, you could not make that analysis because you don’t know what soccer is.

  2. William Piper
    April 26, 2009 at 10:45 am #

    What “foreign sport” do they play? Ice hockey? Bowling? Tennis?

  3. April 26, 2009 at 1:34 pm #

    Actually, my point was that I think Michael avoided that question and assumed the answers to exactly questions you say I have avoided. His post assumes there are rights, and I agree with you: Are there any rights?

    I doubt it. Before even considering the question of LIKELIHOOD OF CONFUSION, you have to establish the fact that the rights in these trademarks will have to be very narrow, because the graphic element is very descriptive of a real, “generic” thing — a building whose appearance is not itself amenable to trademark protection.

    And I am encouraged in my take on this by the very facts that caused Mike such wonder: The Space Needle Corp. hasn’t done anything about it.

    Do you have a link, by the way, for this thing you call “soccer”?

  4. Jay Wells
    April 26, 2009 at 1:43 pm #

    Certainly a stylized rendition of the space needle could be a very strong trademark. Just because it is depiction of a “real thing” doesn’t mean it cannot be a strong trademark or service mark for a host of possible goods or services. In fact, even a very realistic drawing of said needle could be a very strong trademark.

    • April 26, 2009 at 3:29 pm #

      I agree. It could be a fantastic trademark, and strong as iron.

      Except in connection with the “goods and services” described as “being the Seattle Space Needle,” of course.

  5. Jay Wells
    April 26, 2009 at 5:18 pm #

    How is “being the space needle” a registrable service?

    Suppose the company that runs the restaurant in the space needle sought to register an accurate rendition of the needle for “restaurant services.” Merely descriptive under Section 2(e)(1)?

    • April 26, 2009 at 5:28 pm #

      You’re right, it’s not a registrable service, Jay. That’s why a building can’t be a trademark for itself and prevent others from using a plain representation of itself on trademark grounds. If you’re saying it could be a trademark for something else, I agree with you; do you interpret Mike’s post as being about that?

  6. Jay Wells
    April 26, 2009 at 6:20 pm #

    Mike said that the space needle logo is a registered trademark. So he was speaking of infringement in that context. He wasn’t talking about some kind of “building infringement.” He isn’t saying the space needle building was registered for “being a building.”

    If the Yankees registered a logo containing a likeness of Yankee Stadium for clothing or entertainment services or whatever, and someone else used a rendition of Yankee Stadium for something or other, surely there might be a trademark infringement claim.

    • April 26, 2009 at 7:23 pm #

      I sure hope there’d be one, and that I’d get to represent the defendant!

  7. Scott Creasman
    April 27, 2009 at 3:32 pm #

    Can anyone say “INTA 2009 – Meet the Bloggers Smackdown?!?!”
    John Welch could officiate; I think he is a New England Revolution fan, so he is probably equally biased against a Sounders fan and people who make fun of “foreign sports.”

  8. April 28, 2009 at 10:18 am #

    LOL — just as there is no scoring in soccer, there are no smackdowns among trademark bloggers, only love, love, love!

  9. May 3, 2009 at 5:55 pm #

    Ron, thanks for the tweak.

    If the Space Needle Corporation owns a design mark (which the PTO has registered, no less), I don’t see why others can appropriate a confusingly similar mark without the Space Need Corporation’s consent simply because the design depicts a building. I realize this may beg the question of whether the Sounders’ use of the logo is confusingly similar, but if it is, I would think SNC would have a claim. (And if the design mark is famous, I would think the SNC would have a claim for dilution even if the use is not confusingly similar.) If SNC doesn’t have such a right merely because its design mark is the profile view of the building it owns, its registration would seem to be meaningless.

    Also, isn’t this question awfully close to what the Sixth Circuit decided in the Rock and Roll Hall of Fame v. Gentile case, i.e., that a distinctive building can function as a trademark if the owner treats it as such — which the Museum did not but the SNC appears to? In that case, the Museum didn’t use its multi-faceted building as an indication of source (since it sold images depicting the building from the front, back, side, at dawn, at dusk, etc., which all looked different), whereas the Space Needle profile looks the same from every angle and is the image SNC has used as a trademark and even registered with the PTO….

    That’s my view. Looking forward to seeing you at INTA!

    • May 6, 2009 at 6:02 pm #

      Oh man, answering this looks like real work. (Sigh.)

      My only real point, frankly, is exactly what Jay Wells said earlier on, but he is always so eager to mix it up it sounded as if we disagree. “Your comment begs the question. Are the marks similar and are the goods/services so related as to result in a likelihood of confusion?” I didn’t think you asked this question, and I was tweaking you for leaving the less-well-informed with the possible impression that these fundamental questions need not be asked — that it is enough to say, “They used the building! That can’t be allowed!”

      Trademark dilution based on the stylized depiction of a building… as a way to prevent any other person from utilizing an image of that building as (or as part of) a trademark? Talk about boot-strapping, and another potential reason to get rid of the dilution cause of action! ;-)

Trackbacks/Pingbacks

  1. Meg Langley Grainger - April 27, 2009

    RT @RonColeman: Buildings are not trade marks … not even the Space Needle http://tinyurl.com/dyklo4

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