Amazing Spaces, Inc. v. Metro Mini Storage

• Decision Date: 28 September 2009
• Docket Number: Civil Action No. H-08-0629.
• Parties: AMAZING SPACES, INC., Plaintiff, v. METRO MINI STORAGE, et al., Defendants.
• Court: U.S. District Court — Southern District of Texas

665 F.Supp.2d 727

AMAZING SPACES, INC., Plaintiff, v. METRO MINI STORAGE, et al., Defendants.

Civil Action No. H-08-0629.

United States District Court, S.D. Texas, Houston Division.

September 28, 2009.

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Gregory M. Luck, Russell Brandon Bundren, Duane Morris LLP, Houston, TX, Katherine Y. Fergus, Duane Morris LLP, Boston, MA, for Plaintiff.

James D. Petruzzi, Mason & Petruzzi, Thad Kingston Jenks, Harrison Bettis et al., Houston, TX, for Defendants.

MEMORANDUM AND OPINION

LEE H. ROSENTHAL, District Judge.

This is a trademark dispute over a logo consisting of a raised, five-pointed star set within a circle. Amazing Spaces, Inc., a self-storage services company based in Houston, Texas, has used this star logo on its self-storage facilities since 1998 and registered it as a trademark in 2004. Metro Mini Storage, another self-storage company located in Houston, Texas, uses a similar five-pointed star set within a circle logo on its buildings. Amazing Spaces sued Metro and its builder, Landmark Interest Corporation ("Landmark"), alleging trademark infringement, trade dress infringement, copyright infringement, unfair competition, and a violation of the Texas Anti-Dilution Statute. (Docket Entry Nos. 1, 24). Metro and Landmark respond that the star mark is not entitled to trademark protection because it is widely used in Texas and does not identify Amazing Spaces. Metro and Landmark also asserted in a counterclaim that Amazing Spaces falsely represented in its trademark application that it was the first company to use the star mark in connection with rental storage spaces and that the trademark registration is invalid and unenforceable as a result. (Docket Entry No. 14).

At the initial conference, this court ordered discovery and motions to occur in stages, with the first stage addressing "issues raised by the `trademarkability' of the Texas star and similar issues affecting copyright and trade dress." (Docket Entry No. 18). After this discovery, the defendants moved for summary judgment that Amazing Spaces's star mark cannot be trademarked. (Docket Entry No. 42). Amazing Spaces responded, (Docket Entry No. 44), and the defendants replied, (Docket Entry No. 52). Amazing Spaces moved for summary judgment on the fraud counterclaim, (Docket Entry No. 41), to which the defendants responded, asserting that the initial discovery phase did not include the fraud claim and seeking a continuance under Federal Rule of Civil Procedure 56(f). (Docket Entry No. 43). Amazing Spaces replied, arguing that the defendants are not entitled to a continuance because they "aggressively pursued discovery on their fraud claims within the initial discovery phase." (Docket Entry No. 48).

Based on a careful review of the motions, responses, and replies, the evidence in the record, the parties' submissions, and the applicable law, this court grants the defendants' motion for summary judgment. The undisputed facts in the summary judgment record show that, as a matter of law, the star mark is not entitled to trademark protection. Amazing Spaces's motion for summary judgment on the fraud counterclaim is denied as moot.

The reasons for these rulings are explained in detail below.

I. Background

Amazing Spaces provides self-storage services at three locations in the Houston area. (Docket Entry No. 44, Declaration Of Kathy Tautenhahn at ¶ 4). Amazing Spaces was incorporated in 1997 by Scott and Kathy Tautenhahn. The corporate logo is a series of mountain peaks with the star mark on the top of each peak and the words "Amazing Spaces. Self Storage • Boxes • Moving Supplies" at the base. Amazing Spaces opened its first storage facility on West Road in Northwest Houston in May 1998. Landmark constructed the West Road facility. (Docket Entry No. 44, Declaration of Kathy Tautenhahn, at ¶ 8). Amazing Spaces had Landmark place a five-pointed raised star within a circle on the outside walls beneath the roof peaks of the West Road buildings. (Id.). In 2001, Amazing Spaces opened a storage facility on Louetta Road in Spring, Texas and in 2006 opened a third facility off Interstate 45 in The Woodlands. (Id.). Landmark built both these facilities. Both used the raised star design under the roof peaks. (Docket Entry No. 42, Ex. 2, Deposition of Kathy Tautenhahn at 50:24-25).

Amazing Spaces asserts that it has used the star mark on the facades of its facilities since 1998. The trademark application filed with the USPTO stated that Amazing Spaces first used the mark in commerce "as early as April 1998." An advertisement for the May 1998 grand opening of the West Road facility used the star mark to show where the complex was located. (Docket Entry No. 42, Ex. 11). Amazing Spaces used advertisements with the star mark indicating the location of its facilities on maps and as a bullet-point graphic to list storage facility amenities. (Docket Entry No. 44, Ex. I). Some of the Amazing Spaces advertisements include pictures of the storage buildings showing the star mark. (Id.). In her affidavit, corporate representative Kathy Tautenhahn stated that the star mark was omitted from advertisements only when "space concerns or the nature of the advertising media" prevented its use. (Docket Entry No. 44, Declaration of Kathy Tautenhahn at ¶ 21). Amazing Spaces used telephone messages that told customers to "look for the star." (Id.). Tautenhahn stated that Amazing Spaces has used the star mark on all its buildings since April 1998. (Id. at ¶¶5-21). Amazing Spaces asserts that it chose the star mark to represent its business because the star evokes the "amazing spaces" of the outdoors, not because of its association with the State of Texas. (Docket Entry No. 44, Declaration of Kathy Tautenhahn at ¶ 16). Amazing Spaces asserts that its star mark is not meant to represent Texas because its goal is to become a national franchise. (Id., at ¶ 17). Although Amazing Spaces offers franchise opportunities outside Texas, the record does not include evidence of any locations outside Texas.

Landmark and Metro assert that the star mark cannot be trademarked because it is "immediately recognizable as the Texas Star." (Docket Entry No. 42, at 2). The defendants assert that the star mark is widely used by businesses, government entities, and individuals across Texas "to adorn private and public buildings, roadways, signs, business logos, homes, [and] personal property." (Id., at 5). According to the defendants, a five-pointed star "has been a Texas symbol since the early days of the Texas Republic" and "Texans everywhere seek to preserve and promote their Texas heritage by displaying the Texas star." (Id., at 3-4). The defendants note that the Texas flag and the seal of the State of Texas each include a five-pointed star. (Id.). The defendants submitted a May 12, 2003 press release by the Texas Secretary of State stating as follows:

As Texans, we take great pride in the symbols of our great state—the Lone Star Flag, the Alamo, the Texas State Seal, and so on. It is a reflection of the esteem in which we hold these symbols that thousands of Texas businesses choose to include them in their name or use them as part of their logo.

(Docket Entry No. 42, Ex. 4). The defendants assert that the star mark "is well-recognized in the Lone Star State and beyond." (Docket Entry No. 42, at 3).

On August 15, 2003, Amazing Spaces applied to register the star mark with the United States Patent and Trademark Office for use in "Personal Storage Services" under International Class 39. Before applying for the trademark registration, Amazing Spaces hired a company to conduct a database search to determine whether any storage-unit companies had registered a similar star mark with the USPTO. The survey found no such registration. (Docket Entry No. 42, Ex. 23). In the application, the Amazing Spaces corporate representative stated under oath as follows:

[T]o the best of her knowledge and belief, no other person, firm, corporation, or association has the right to use said mark in commerce, either in the identical form or in such near resemblance thereto as to be likely, when applied to the goods and services of such other person, to cause confusion, to cause mistake, or to deceive.

(Docket Entry No. 41, Ex. 13). The application was granted on July 6, 2004 as U.S. Trademark Registration No. 2,859, 845 ("the '845 Registration") under international class 39 for "storage services." (Docket Entry No. 44, Declaration of Kathy Tautenhahn, at ¶ 15).

On one occasion before the trademark application was granted, Amazing Spaces attempted to enforce its mark within the storage industry. Amazing Spaces threatened legal action against Community Self Storage in 2003 when it learned that Community was using the star mark on its buildings. In response, Community Self Storage removed the mark. (Docket Entry No. 44, Declaration of Kathy Tautenhahn at ¶ 38).

Metro and Landmark argue that Amazing Spaces was not the first company to use the star mark in commerce or even within the self-storage industry. The defendants submitted many pictures of a five-pointed star or five-pointed star-within-a-circle used by businesses and on buildings in Texas. The defendants also rely on an October 27, 2000 letter from Tautenhahn to an architect working with Amazing Spaces. (Docket Entry No. 42, Ex. 16, EDGE_00050). Attached to the letter were photographs of different design elements Tautenhahn thought could be used for the new Amazing Spaces facility. Tautenhahn referred to a design of stars inside a backlit circle that she had seen in a Chili's restaurant and said: "Love the lighted stars-maybe we could use them on the peaks outside?" (Id., at EDGE_00487). The defendants assert that Amazing Spaces got the idea to use the star mark from a national restaurant chain.

Metro and Landmark argue that not only is the star-within-a-circle used on a wide variety of business and government...