So…. I decided to elaborate a little more on the previous post on store designs after a weekend spent at the mall with my significant other (yes I found myself, again, in Victoria Secret where many a man has met supreme disappointment when he attempts to pass the time or even find a place to sit). Actually, I was planning on writing another post on store design because the topic is just that complex.

In the previous post I talked a lot about how a store design could be protectable. I even discussed some of the hurdles that a company could face in its bid to obtain protection for store designs. The main hurdle is the difficulty of demonstrating that store design is inherently distinctive or that it has acquired secondary meaning. And the difficulty inherent in demonstrating inherent distinctive is that store designs aren't generally that unique or different from store-to-store. Most store layouts and designs incorporate many "essential" elements like shelving, lighting arrangements, tables, walls and glass. Where a store presents a design and layout that can be specifically defined and linked to a particular source because it has a different arrangement or distinctive, it can acquire distinctiveness over time. Distinctiveness is acquired through continuous use of the same design, active promotion of the design, widespread consumer recognition of the design as associated with a particular source.

But secondary meaning is hard to prove and usually requires providing some pretty compelling evidence (consumer surveys, extensive media attention, significant foot traffic). Another difficulty that even Apple faced: proving that variations in a store's design across different locales did not modify the character of the mark. Almost by necessity, Apple store designs vary by location. This is perfectly understandable, especially when you consider the multitude of factors influencing the design and layout of a store front. Consider the two images below (both images courtesy of apple.com)

As a trademark attorney, I am constantly trying to figure out ways that I can help clients see the value in protecting a certain symbol or word, an identifier that ties to the client and distinguishes them in some sense. This is, after all, the most fundamental purpose of a trademark: to distinguish, to identify. Some call this heightened awareness by an attorney “over lawyering”. I would like to think that it is simply doing my due diligence!

More and more businesses seem to be warming to the idea of trademark rights in store designs. Yes, store fronts and interiors, you know the distressed facades showing exposed bricks, the marquee sign on top of the store with a funny looking arrow pointing in no direction whatsoever, the arrangement of merchandise display tables. Those designs. True, a store design is not necessarily a word or solitary logo like we think of when we think about ordinary trademarks (ordinary meaning plain old words, phrases, and logos). The fact remains that store designs make just as compelling an impact on consumer perceptions than a word or logo flashing across the television screen or calling out to you from a billboard.

But enough pontificating. Let’s take a case-in-point: the Apple Store.

If you are a parent, you have probably heard of a game called Minecraft. It’s this game that allows players to carve underground and above-ground worlds out of textured (and extremely pixelated) cubes, explore, gather resources, and engage in combat. I haven’t really played it and don’t see the attraction (the pixilation just hurts my eyes, or maybe it’s because I am playing it on an iPhone and I can never really figure out what is going on?) The game is extremely popular and has won many awards that are badges of honor in the gaming community. And you know you’ve hit it big as a game developer when merchandise bearing your name hits the store.

Another thing that is apparently big in the gaming world are conventions. I am not even remotely joking here. Each year, Minecraft has a big gala event where fellow gamers congregate to hold discussions about gameplay and (of course) challenge each other in one massive community battle. Because this is a once a year event and because Mincraft is just the coolest of cool games, tickets sell out pretty quickly. That means many disappointed gamers are left without a chair once the music stops.

‘But not so fast’, says one enterprising fan. ‘If Minecraft can generate this kind of buzz, why can’t I hold my own convention? I’ll simply rent some space, order balloons, put up some projector screens and a bunch of computers, and invite everyone to come.  I’ll charge $50 a day (why not, it’s Minecraft and people LOVE IT). Kids are happy. Parents are happy. Everyone wins.’