Wynn Resorts Holdings, LLC (“WYNN”) filed trademark application (Appl. No. 103024370, see below) on May 1, 2014, seeking to trademark its Wynn Building for use in casino, entertainment, hotel, conference, theater, and relevant services. After 6 years of examination, Taiwan’s IP Office (TIPO) denied WYNN’s application on July 14, 2020, finding the structure of the building presented in the 3-dimensional trademark application not distinctive.
According to the Guidelines For Examination
Of Unconventional Trademark (“Guidelines”), for a 3-dimensional trademark to be
registrable, such mark, as is required for conventional 2-dimensional trademark,
has to be distinctive. Applicant needs to prove that ordinary consumers would
view such 3-dimensional trademark as a symbol representing source of goods or
services, so that consumers could use such 3-dimensional mark to distinguish
the products and services in the relevant market. Based on such requirement, in
comparison with conventional trademark, TIPO explained that generally it would
be more difficult to prove a 3-dimensional shape is distinctive, especially when
the contour or shape has been commonly seen in the relevant businesses, because
such shape is less likely to be recognized as symbol representing source of
goods or services.
Turning to WYNN’s application, TIPO noted
that the main characteristic of the Wynn Building is its arc shape. However,
TIPO found such curve or arc shape feature has been quite common and adopted by
other similar hotels or facilities. Thus, such structural feature is not unique
and less likely to create strong impression among the consumers. In other
words, such feature will only be viewed as structure of building, rather than
symbol of source of goods or service. To meet the requirement for registration
of 3-dimensional trademark, WYNN has to prove that its Wynn Building has
acquired distinctiveness through its continuous marketing and use in Taiwan.
WYNN stated that its 3-dimensional
trademark application has been granted in the U.S., and submitted relevant news
reports regarding its hotel business in Macau and advertising in China, U.S.,
Korea, Hong Kong, and Japan, trying to prove that its Wynn Building has
acquired distinctiveness. However, TIPO found such evidence not supportive
because these materials were either used in other countries, or showed the use
of word mark “Wynn” only. As such, TIPO determined that these documents could
not prove Wynn Building has acquired distinctiveness through continuous
marketing and advertising in Taiwan’s market.
Based on the reasons above, TIPO denied
WYNN’s application accordingly.
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