Summary
The Seventh Circuit affirmed summary judgment for Forest River in a trademark infringement action brought by Custom Vehicles. The court held that “Work-N-Play” was a descriptive mark that had not acquired secondary meaning through commercially meaningful use, and that registration did not overcome the evidence showing no protectable trademark. Without a valid trademark or secondary meaning, Custom Vehicles could not establish infringement or likely consumer confusion.
Topics
Practice areas
Questions Presented
- Whether Custom Vehicles' descriptive mark, "Work-N-Play," had acquired secondary meaning sufficient to receive trademark protection.
- Whether Custom Vehicles' federal registration created a presumption of validity despite the lack of bona fide use in the ordinary course of trade.
- Whether Forest River's use of "Work and Play" infringed or caused actionable confusion under the Lanham Act.
Holdings
- A descriptive mark is protectable only if it has acquired secondary meaning, meaning that consumers associate the term with a single source rather than with the product category generally. Custom Vehicles failed to prove that "Work-N-Play" had acquired secondary meaning.
- Registration of a descriptive mark creates a rebuttable presumption of validity only when the statutory requirements for registration and use have been satisfied; bare registration does not permit a trademark owner to warehouse a mark or overcome overwhelming evidence that the mark lacks secondary meaning.
- Forest River's use of "Work and Play" did not infringe because Custom Vehicles had no protectable trademark absent secondary meaning, and there was no basis to conclude that consumers would believe Forest River's product originated with, was sponsored by, or was affiliated with Custom Vehicles.
Key quotations
“"[I]f there is no secondary meaning, there is no mark to protect and confusion is not possible."” (4)
“Trademarks cannot be “banked” or “warehoused”—that is, you cannot register thousands of names, unrelated to any product or service that you sell, in the hope of extracting a license fee from sellers of products or services for which one of your names might be apt.” (7)
“But as we said earlier, without proof of secondary meaning there is no basis for thinking a descriptive mark the name of a brand—no basis therefore for supposing that consumers would think Forest River’s van “Work and Play” had been produced by Custom Vehicles instead.” (10)
Factual background
Custom Vehicles developed a van convertible between a mobile office and a camper and called it "Work-N-Play." It registered the mark on an intent-to-use basis, but made only one sale during the relevant six-month period, and that sale was not made under the mark; it later made only a small number of sales. Forest River began selling a different type of towed van called "Work and Play" in 2002, with annual sales exceeding $10 million by 2004. The court concluded that Custom Vehicles lacked sufficient evidence that "Work-N-Play" had acquired secondary meaning identifying Custom Vehicles as the source.
Procedural history
Custom Vehicles claimed that Forest River's use of the name "Work and Play" infringed Custom Vehicles' "Work-N-Play" mark. The United States District Court for the Northern District of Indiana granted Forest River summary judgment. The Seventh Circuit affirmed.