## Facts

- Amazing Spaces, Inc. operated self-storage facilities in the Houston, Texas area beginning in 1998 and used a “raised, five-pointed star set within a circle” on its buildings and in advertising.
- A construction firm, Landmark Interest Corp., built facilities for Amazing Spaces and later built facilities for a competitor, Metro Mini Storage.
- Metro used a similar raised star-in-a-circle design on its self-storage buildings.
- Amazing Spaces obtained a federal registration for the star-in-circle design as a service mark.
- Amazing Spaces sued Metro and Landmark asserting Lanham Act service mark infringement and trade dress infringement, plus related copyright and state-law claims.
- The district court granted summary judgment for defendants, holding the star-in-circle design was not a valid service mark because it was neither inherently distinctive nor shown to have secondary meaning, and dismissed all claims.
- Amazing Spaces appealed, arguing that (1) the registered symbol was protectable and (2) its trade dress claims covered more than the symbol alone.

## Issues

1. Whether the star-in-circle design was a legally protectable service mark (inherently distinctive or possessing secondary meaning) despite defendants’ challenge to the presumption of validity from federal registration.
2. Whether the district court erred by disposing of trade dress, copyright, and related state-law claims by treating them as dependent on the protectability of the star-in-circle design alone.

## Decision

- Affirmed summary judgment that the star-in-circle design was not a protectable service mark and that claims dependent on the symbol as a stand-alone mark failed.
- Reversed summary judgment on trade dress, copyright, and related state-law claims to the extent they were dismissed without analyzing the asserted overall look and feel of the facilities.
- Remanded the trade dress and related claims for further proceedings under the proper framework.

## Legal Principles

- Federal registration creates prima facie evidence of validity and exclusive right to use, but the presumption is rebuttable with evidence the designation is not distinctive or does not function as a mark.
- Common symbols and ordinary geometric designs are generally not inherently distinctive, particularly when widely used in the marketplace or region and presented as decoration rather than branding.
- Secondary meaning requires proof that the primary significance of the designation in consumers’ minds is source identification; relevant considerations include manner and length of use, advertising, sales, surveys, copying, and actual confusion.
- Use of a design mainly as decoration or mainly alongside other prominent marks can weaken a claim that the design alone identifies source.
- Trade dress protection concerns the total image of a product or service and must be analyzed as a combination of elements; failure of one feature to qualify as a mark does not automatically defeat a properly pleaded trade dress claim.

## Conclusion

The court held that the registered star-in-circle design, treated by itself, was too common and too decoratively used to function as a protectable service mark, but it required a separate analysis of whether Amazing Spaces’ broader facility appearance constituted protectable trade dress, so those non-service-mark claims were reinstated and remanded.


Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225 (5th Cir. 2010)