Seventh Circuit: single sale insufficient use in commerce to support trademark registrationFebruary 8, 2007

In Custom Vehicles, Inc. v. Forest River, Inc., the Seventh Circuit Court of Appeals held that a trademark plaintiff did not engage in sufficient use in commerce to support trademark rights. Even worse for the plaintiff, the court held that even if there were sufficient use, the mark at issue was descriptive, and there was no secondary meaning, so the plaintiff had no trademark rights to enforce. Ultimately, the court affirmed the lower court's grant of summary judgment to the defendant.

More details of the case after the jump.

The plaintiff, Custom Vehicles, produced vans that could be converted from a mobile office to a camper in about an hour so the owner could, in its words, "work out of it through the week" and "play out of it on the weekends." Custom Vehicles decided to adopt the trademark "Work-N-Play" for the vans, and filed an intent-to-use trademark application with the USPTO in 2000. One of the plaintiff's vans is shown below:


The defendant, Forest River, began selling a towed van with a ramp door and space in the back sufficient to both transport and repair a vehicle such as a motorcycle or snowmobile. These types of towed vehicles are often called "toy trailers," and Forest River began selling its vans under the name "Work and Play" in 2002. By 2004, its annual sales reached $10 million. A picture of the Forest River Work and Play trailer is shown below:

work and play

Custom Vehicles did not have as much success. Its first van sold under the "Work-N-Play" mark was sold in 2002 to a relative of the owner for a scant $1000, about 2.5% of the normal sales price. It was this sale that Custom Vehicles relied upon to file its statement of use at the USPTO in March 2002. This led to registration of the "Work-N-Play" mark in August 2002. Custom Vehicles did not sell any more vans until 2004, when it sold six over the course of the year. The court first turned to the validity of the "Work-N-Play" mark. The mark is a descriptive mark, and thus cannot be protected without a showing of secondary meaning, or that consumers have come to identify the mark with a particular source as opposed to a broader category of goods or services.

Here, the court noted that the sales of Custom Vehicles' vans were simply too low to support a finding of secondary meaning. While in certain rare cases (typically superexpensive items) a single or very few sales can support secondary meaning, custom vans are not such a case. In the court's words, "it is difficult, maybe impossible, for a small seller of an unpopular brand–a seller who has negligible sales–to acquire secondary meaning for its brand name." Also, the fact that the mark was registered did not help Custom Vehicles, as the court held that any presumption of secondary meaning provided by virtue of the registration had been overcome by the evidence presented. Piling on a bit, the court also noted that Custom Vehicles' trademark registration was also not supported by sufficient use in commerce. After the trademark application was allowed, Custom Vehicles had six months to actually use the mark in commerce in order to obtain its registration (this deadline is extendable for a fee). According to the court, the single sale in 2002 was insufficient "use in commerce" to support registration of the mark, because the single sale was "too obscure an event to alert any significant number of consumers that "Work-N-Play" had a definite referent," and "until that happens, the creator of the mark should not be able to appropriate it." Accordingly, the court affirmed the lower court's summary judgment of no secondary meaning.

To read the full decision in Custom Vehicles, Inc. v. Forest River, Inc., click here.

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