Seventh Circuit Denies Trademark Protection to a Registered Descriptive Mark Which Has Not Acquired Secondary Meaning

Case: Custom Vehicles, Inc. v. Forest River, Inc., No. 06-2009 (7th Cir. 02/07/2007)

The One Sentence Summary: Although the plaintiff was the first to use the mark at issue, its limited efforts did not generate secondary meaning and did not constitute use of the mark within the “ordinary course of trade.”

What They Were Fighting About: Plaintiff, Custom Vehicles, Inc., sued Forest River, Inc. for trademark infringement. At issue was use of the mark “Work-N-Play.” In 2000, the plaintiff registered the mark with the PTO as an “intent to use” mark. By 2004, the plaintiff sold a total of eight (8) vehicles using the mark. In 2002, the defendant started using the same mark on its product. In contrast, it was successful, with annual sales exceeding $10 Million.

Federal Circuit Holdings:

• The Court found that “Work-N-Play” was a descriptive mark and as such, could not receive trademark protection without acquiring secondary meaning (i.e., the mark “has come to denote a single brand, not the entire product, so that its use by other sellers of the product would confuse consumers about the source of what they were buying.”) Given that the plaintiff made negligible sales of an unpopular brand the Court held that it had not acquired the requisite secondary meaning and thus, was not protected.
• Regardless of whether it had acquired secondary meaning, the plaintiff argued that registration with the PTO gave it a presumption of validity. The Court took issue, holding that bare registration was not enough to earn the presumption. Instead, within six months of registration the mark had to be used in commerce, defined as “the bona fide use of a mark in the ordinary course of trade, and not merely to reserve a right in the mark.” 15 U.S.C. § 1127. In the instant case, the Court held that the sale of one vehicle in the six month window did not rise to the level of use within the “ordinary course of trade.” Rather, the Court held that “use,” within the meaning of 15 U.S.C. § 1127, would have to “be enough to seize the attention of the relevant market” and thus, place the market on notice that the registered mark was taken.