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

August 08, 2008
Post by Blog Staff

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.E.T. Browne markets personal care and beauty products containing cocoa butter under the brand name "Palmer's." The packages of the products display "Palmer's" and "Cocoa Butter Formula." An example of the use of these marks is displayed below:

Palmers jarBrowne owns two registrations relevant to the case: PALMER'S COCOA BUTTER FORMULA is registered on the principal register at the USPTO, but COCOA BUTTER FORMULA is only registered on the supplemental register.Cococare also sells personal care and beauty products containing cocoa butter, but in a much smaller amount than Browne. Cococare began selling new products formulated with cocoa butter and Vitamin E in 1994, and labeled them "Cococare Cocoa Butter Formula." An example of the Cococare packaging is below:Cococare jarIn 2002, Browne brought suit against Cococare for trademark infringement. Cococare moved for summary judgment on the grounds that Browne's COCOA BUTTER FORMULA mark was not protectable because it was generic, and that even if it was descriptive, secondary meaning had not been shown. The district court concluded that the mark was a generic term and entered summary judgment in favor of Cococare. Browne's appealed.The Third Circuit affirmed, but on different grounds. The court first addressed whether a genuine issue of fact existed regarding whether COCOA BUTTER FORMULA was generic.
The court applied the "Primary Significance Test," which asks "whether consumers think the term represents the generic name of the product [or service] or a mark indicating merely one source of that product [or service]." If the term refers to the product, the term is generic, but if the term refers to one source or producer of that product, the term is not generic. This is generally proven via one of two types of surveys. The first is a "Teflon survey," where the survey runs a participant through a number of terms, asking whether they are common names or brand names. After the participant understands the distinction, the terms at issue, along with others, are brought up for the participants to categorize. The second is a "Thermos survey." A "Thermos survey" asks the respondent how he or she would ask for the product at issue. If the respondents generally use the brand name ("Thermos") rather than the product category name ("Vacuum Bottle"), the survey provides evidence that the brand name has become generic.Browne conducted a form of a "Thermos survey." The results of the survey did not indicate that respondents would use the term "cocoa butter formula" to ask for the product, but the district court found several flaws with the survey, and afforded it little to no probative value. The Third Circuit disagreed, and stated that the survey raised a reasonable inference (at least at the summary judgment stage) that "Cocoa Butter Formula" did not describe the product genus. Additionally, Browne provided evidence that competitors used terms other than "Cocoa Butter Formula," which indicated that the term was not necessary to convey the type of goods sold. The court held that the use of other terms bolstered its conclusion that a genuine issue of material fact existed on the question of genericness, and that the district court should not have entered summary judgment for that reason.Given its conclusion on the issue of genericness, the court then proceeded to whether, if the mark is considered descriptive, there was sufficient evidence of secondary meaning to survive summary judgment. The Third Circuit applies an eleven-item, non-exhaustive list of factors relevant to the factual determination whether a term has acquired secondary meaning:

  1. the extent of sales and advertising leading to buyer association
  2. length of use
  3. exclusivity of use
  4. the fact of copying
  5. customer surveys
  6. customer testimony
  7. the use of the mark in trade journals
  8. the size of the company
  9. the number of sales
  10. the number of customers
  11. actual confusion

Browne offered evidence showing its use of the term continuously for 20 years, substantial amounts of money spent promoting the term, and the increase in the sales of products bearing the term. Browne offered no direct evidence that consumers linked the phrase back to any specific provider of goods, instead relying on evidence of advertising and sales growth. In spite of this evidence, the court held there was no genuine issue of fact that COCOA BUTTER FORMULA had not acquired secondary meaning. The court noted that Browne had always used the term along with "Palmer's," and therefore while PALMER'S COCOA BUTTER FORMULA may have obtained secondary meaning, COCOA BUTTER FORMULA alone had not. A jury could not evaluate the strength of that portion of the mark independently from the mark as a whole. Therefore, "under the specific circumstances presented by this case," the court held the marketing and sales evidence provided by Browne did not create a reasonable inference that COCOA BUTTER FORMULA had acquired secondary meaning, and as a result the court affirmed the grant of summary judgment on that basis.Further, under 15 U.S.C. § 1119, the Third Circuit held that the district court should order that an appropriate disclaimer should be entered on the principal register for Browne's mark. Even though Cococare may not benefit from such a disclaimer, the court stated that it would not allow the absence of a disclaimer on the principal register to confuse a future business into believing that it may use the term "Cocoa Butter Formula." The supplemental register should only be altered if Cococare proceeds with its genericness claim and the district court holds that the mark is generic.To read the full decision in E.T. Browne Drug Co. v. Cococare Prods., Inc., click here.


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