The Empire strikes back

Via the Duets Blog, a trademark resolution that has been building for far too long:

It is not easy to establish fame for purposes of showing a likelihood of dilution by blurring.  Owner of the Empire State Building marks rose to the challenge in a recent decision by the Trademark Trial and Appeal Board (“the Board”).  ESRT Empire State Building, LLC v. Michael Lang, Opposition No. 91204122 (June 17, 2015) [not precedential].

NYC Beer Co’s proposed mark

Others have tried and lost.  See Coach Servs., Inc. v. Triumph Learning LLC, 101 U.S.P.Q.  Omega SA v. Alpha Phi Omega, Opposition Nos. 91197504 and 91197505 (Mar. 31, 2016) (finding that Omega had failed to show fame prior to any established, continuous use of mark with the specific goods or services in the application or registration, but allowed Omega to amend its opposition to show this evidence if it could); Virgin Enterprises Limited v. Steven E. Moore, Opposition No. 91192733 (August 31, 2012) (telling Richard Branson that his VIRGIN mark was not famous because his company failed to provide sufficient evidence or a survey supporting fame).

Specifically, in the Empire State Building proceedings the applicant was seeking to register the mark below for various beers, ales, extracts for making beer, alcohol-free beers and other related goods. . . .

Opposer’s Empire State Building Mark

Not surprisingly, the ESRT Empire State Building, L.L.C. (“ESRT”) opposed the application on the grounds of dilution of its famous registrations for the EMPIRE STATE BUILDING mark with respect to “entertainment services, namely providing observation decks in a skyscraper for purposes of sightseeing” (Reg. No. 2,411,972), and with respect to “real estate services, namely management and leasing of real estate” (Reg. No. 2,413,667).  Further, ESRT owned the registration for the design mark below in connection with “entertainment services, namely providing observation decks in a skyscraper for purposes of sightseeing” (Reg. No. 2,429,297),  and with respect to “real estate services, namely management and leasing of real estate” (Reg. No. 2,430,828).

In finding fame, the Board explained that testimony and evidence established that “[f]or 40 years, the Empire State Building was the tallest building in the world, and presently is the fifth tallest building in the United States.” . . .

Of course.  And yet it I must admit I never really quite got it here at LIKELIHOOD OF CONFUSION until just now.  It makes sense, however, that it would be iconic Empire State Building — the world’s tallest edifice of most of my New York City youth, and a towering presence for much of my recent adulthood — that would, despite the shadow it casts, make me see the light.

No excuse for this, really.  Because for years I’ve been interested in assertions of intellectual property rights in connection with landmark buildings.  In a bunch of posts, I’ve written about and tried to make the following points:

• Naming rights in buildings and other structures raise interesting issues, especially when sponsorships change or the original corporate owners beat town or go bust.  Can buildings, I wrote in this 2006 post, ever be trademarks?  I thought they might be, referring at the time to the flagship skyscraper of Citigroup, which had just bought the naming rights to the then-planned stadium for the New York Mets, Citi Field, which was the inspiration for the post.
• Not long afterwards, I wrote about copyright claims concerning the design of the ancient and venerable Manchester Cathedral in Great Britain
• Then in 2009 I forgot what I said about the Citigroup Building in 2007 and stupidly insisted that the images of buildings — in particular the Seattle Space Needle — couldn’t function as trademarks, maintaining my stubborn position despite a well-reasoned argument to the contrary in the comments
• I also noticed in 2011 that in Taiwan, the owners of Taipei 101, a super big skyscraper over there, were seeking to collect “rent” not only in the literal landlord fashion but “à la Coase” by claiming trademark rights in their building’s image and demanding license fees from sellers of trinkets bearings its image
• In 2010, I laughed along with Boing Boing when the Chicago’s Marina City Towers condominium association tried to claim “common law copyright” on the landmark Chicago buildings’ “name or image
• More recently, I weighed in on the proposition that someone could try to stop tourists from taking pictures of the Eiffel Tower because its image was protected by “intellectual property rights”

You’ll notice that the feints in the direction of silly claims in these posts — where I was not wrong — were along the lines of copyright.  Those were dumb claims.  But trademark?  Not dumb, and I was dumb to ever doubt them, at least to some extent, as I did when I argued against it in the Seattle Space Needle post so long ago.  As John Welch explains, summarizing the TTAB’s decision:

Applicant Liang described his mark as including “a building resembling the Empire State Building” and he acknowledged that the building is famous. Opposer relied on, inter alia, two registration for its design mark for entertainment services (the observation deck) and real estate management and leasing services. The registrations described the mark as consisting of “the shape of the exterior of a skyscraper with a pointed, spindled top.”

Since the opposed applications were filed under Section 1(b) based upon intent-to-use, Opposer needed to prove that its marks became famous prior to the filing date of the applications.

The Board observed that fame for likelihood of confusion purposes differs from dilution fame; the latter is not determined in the context of certain goods or services, but rather the dilution claimant ‘must show that when the general public encounters the mark ‘in almost any context, associates the term, at least initially, with the mark’s owner.’”

The evidence established that the Empire State Building was completed in 1 931 and for 40 years was the tallest building in the world. It has been featured in hundreds of movies, including King Kong and Sleepless in Seattle. It features a 103rd floor observation deck visited by millions of guests per year. Opposer’s marks have been used with a wide variety of goods and services, and numerous licenses have acknowledged Opposer’s rights in the marks, with full attribution. Its annual sales revenues and advertising expenditures in connection with the marks are “very significant.” The marks receive extensive media exposure in print, radio, television, and the Internet. The Board therefore found the marks to be famous under Section 43(c)(2)(A).

Yes:  The Empire State Building is famous — very.  But keep this in mind, and here’s where it gets interesting:

The owner of the mark uses it for (i) entertainment services, i.e., the observation deck, and (ii) real estate management and leasing services, i.e., basically the business of the building itself.  It proceeded here, successfully, on a likelihood of dilution basis based on that fame, to prevent a registration from utilizing the Empire State Building in connection with a good or service having nothing to do with the building.

This is the fundamental operation of trademark dilution law, which here is meant to prevent damage due to “blurring.”  It’s not that consumers will look at that logo at left and really think that the Empire State Building folks are the origin of this beer, and it’s not that they think they are otherwise affiliated with its manufacture, or approved, sponsored or licensed it, etc.  Those would all be plain-vanilla infringement thoughts.

Rather, we’re talking about dilution by blurring here.  And “blurring” is erosion of a trademark’s distinctiveness:  True, while consumers today might not see that logo and think that NYC Beer comes from or flows with the approval of the Empire State Building people, but if we let this kind of thing go on, it will surely happen soon enough!

Now, on the one hand, to their credit, the Empire has not, unlike, at least per that old report I linked to years ago concerning Taipei 101, gone all around the souvenir shops that surround it in Midtown and tried to exact tribute for every postcard, keychain, poster, t-shirt… you get the picture.  It would be impossible.  Indeed, they would have to go far beyond Midtown. Empire State Building chochtkes are ubiquitious not only in Midtown, and not only in Manhattan, and not only in New York City, but pretty much in every transit-related retail location in and out of metropolitan New York City.

The “ESB” is everywhere.  It’s a true icon.  It is a pretty building, even if architectural snobs prefer its jilted slightly younger brother, the Chrysler Building for style and pizzazz; frankly, I’ll take the muscular, streamlined ESB anyway over the cutesy Chrysler anyway.

And indeed, while it has long been surpassed, and surpassed, and surpassed again as the World’s Tallest Buildings, and New York’s too — and despite the odd, awkward moment where it tragically unwillingly regained that distinction ever so briefly — the Empire State Building will always be the Empire State’s building of buildings, and —

What’s the point?

The point is that that damned silhouette is already EVERYWHERE.  It can’t get any more diluted, blurred, un-distinct.  It can’t get any less likely to designate a source of anything or suggestion of nothing but nothing.

The image of the Empire State Building is generic for New York.

It’s no trademark at all.

I was right the first time.

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