Fourth Circuit: OBX geographically descriptive with no secondary meaning; noninfringement affirmed

In a decision last month, the Fourth Circuit affirmed a district court's grant of summary judgment to the defendant in a trademark case.  The mark at issue was OBX, which was an acronym coined to be short for the Outer Banks area of North Carolina.  The plaintiff coined the acronym and sold various products bearing the acronym.  Over time, the public began using the acronym as shorthand for the geographic region in North Carolina.  

The district court, examining the extensive evidence in the record that the public associated OBX with the region rather than with a particular provider of goods or services, granted summary judgment of noninfringement to the defendant, who sold goods bearing the mark "OB Xtreme."  The Fourth Circuit affirmed, noting that while the plaintiff did spend a substantial amount of money on advertising, there was simply no evidence in the record that consumers associated OBX with anything other than the region.  This was the plaintiff's owner's intent:  he "intended solely that OBX become associated with and descriptive of a geographical location, the Outer Banks," and affixed the OBX letters "not to label an OBX brand product produced by [the plaintiff], but to indicate an association with the Outer Banks."  Accordingly, there was no evidence of secondary meaning, and the trademark claims failed as a matter of law.

More detail of OBX-Stock, Inc. v. Bicast, Inc. after the jump.


Third Circuit: Evidence of secondary meaning must correspond to the asserted mark

In a decision Wednesday, the Third Circuit affirmed a district court's grant of summary judgment in a trademark case, finding the asserted mark not protectible as a matter of law.

The district court granted summary judgment that the mark was generic.  On appeal, the Third Circuit held there was a genuine issue of fact as to genericness, but that even if it the mark was descriptive, there was no genuine issue as to secondary meaning and upheld the summary judgment.  Specifically, the plaintiff had no evidence that it had independently used the mark at issue separate and apart from its house mark, so evidence of sales and marketing of the product could not support an inference of secondary meaning.  Further, the plaintiff did not perform a secondary meaning survey.  As a result, "under the specific circumstances presented by this case," the evidence presented was insufficient to generate a genuine issue of material fact.  Accordingly, the court affirmed the district court's grant of summary judgment.

More concerning E.T. Browne Drug Co. v. Cococare Prods., Inc. after the jump.


First Circuit: District court's determination that "duck tour" is nongeneric doesn't hold water

In a lengthy decision last week, the First Circuit held a district court erred in finding the term "duck tour" nongeneric in the context of sightseeing tours on amphibious vehicles.  The district court, based largely on the nongenericness of this aspect of the parties' marks, found the plaintiff was likely to succeed in its infringement claims, and entered a preliminary injunction.  The defendant appealed.

The First Circuit vacated the injunction.  The district court's erroneous holding regarding the generic nature of "duck tour" caused the district court to give too much weight to those terms in the composite marks in its likelihood of confusion analysis.  As a result, the district court also erred in finding both a likelihood of confusion and a likelihood of success on the merits for both the word marks and design marks at issue.  Therefore, the court vacated the district court's preliminary injunction.

More concerning Boston Duck Tours, LP v. Super Duck Tours, LLC after the jump.


Tenth Circuit: 1-800-SKI-VAIL does not infringe VAIL service mark

In a decision last week, the Tenth Circuit affirmed a district court's ruling in a trademark case in favor of the defendant, finding the defendant's use of the vanity telephone number "1-800-SKI-VAIL" for marketing services relating to the ski industry was not likely to be confused with the Plaintiff's service mark registration for "VAIL" encompassing the gamut of commercial recreational activities and accompanying amenities available in and around the Town of Vail, Colorado.  In so holding, the court found no error in the district court's holding that the ordinary consumer did not associate the word "VAIL" exclusively, if at all, with the Plaintiff VA or its ski resort, and that VA's evidence of actual confusion lacked credibility.  In a spirited dissent, Judge Tymkovich argued that the totality of factors strongly confirmed that the Defendant's mark was likely to cause consumer confusion.

More detail of Vail Assocs., Inc. v. Vend-Tel-Co. after the jump.


Sixth Circuit: No likelihood of confusion between competing wines using same geographic term

In a decision last week, the Sixth Circuit affirmed a district court ruling that use of the mark "Chateau de Leelanau Vineyard and Winery" did not create a likelihood of confusion among consumers with the plaintiff's "Leelanau Cellars" federally-registered mark.  "Leelanau" in both marks is a reference to a peninsula in Michigan where the wine is produced.  While the district court erred by not affording the plaintiff's geographically descriptive mark the statutory presumption of secondary meaning, the court affirmed the lower court's ruling on the ground that the plaintiff had not demonstrated that a likelihood of confusion between the two marks.

More detail of Leelanau Wine Cellars, Ltd. v. Black & Red, Inc. after the jump.


"Aspirina" descriptive of analgesic goods; denial of registration affirmed

In a decision today, the Federal Circuit affirmed a decision by the TTAB that the term "ASPIRINA" is descriptive of analgesics, and therefore not subject to trademark protection in the United States absent a showing of secondary meaning.  While the evidence of record was conflicting as to whether ASPIRINA was descriptive, given the deferential standard of review, the panel majority affirmed the decision to deny registration to Bayer.

Judge Newman dissented, and would have given more weight to the fact that ASPIRINA is a registered mark in 34 foreign countries, and the fact that the applicant was policing use of the term online.

More details of In re Bayer Aktiengesellschaft after the jump.


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