Park N Fly v.

Dollar Park & Fly FACTS: Park N Fly and Dollar Park & Fly both operate long term parking lots near airports in various cities. In 1971, Park N Fly registered their name. Dollar Park & Fly challenges the validity of Park N Flys registration because it is a generic mark with respect to airport parking lots. The words park and fly are both ordinary words and essential in describing the business. Issue: Whether a mark is incontestable after it has been registered and used for five years, even if it is merely descriptive Held: Yes, it is incontestable. There are four categories of trademarks: (1) generic (or common descriptive), (2) merely descriptive, (3) suggestive, and (4) arbitrary or fanciful. A generic (or common descriptive) mark is one that refers, or has come to be understood as referring, to the genus of which the particular product or service is a species; a merely descriptive mark specifically describes a characteristic or ingredient of an article or service; a suggestive mark suggests rather than describes an ingredient, quality, or characteristic requiring imagination, thought, and perception to determine the nature of the goods; and an arbitrary or fanciful mark is usually a word or words invented solely for use as a trademark. A generic mark cannot become a registrable trademark under any circumstances, a merely descriptive mark can become a registrable trademark by acquiring a secondary meaning (i.e., becoming distinctive of the applicant's goods), and suggestive and arbitrary or fanciful marks are registrable without regard to secondary meaning. After a registered mark has been in continuous use for five years, the registrant may obtain incontestable status for the mark pursuant to 15 U.S.C. Sec. 1065. Once a mark has become incontestable, registration is conclusive evidence of the registrant's exclusive right to use the registered mark subject only to the cancellation provisions of 15 U.S.C. Sec. 1064 and the defenses enumerated in 15 U.S.C. Sec. 1115(b). If an incontestable mark becomes generic, it may be cancelled pursuant to 15 U.S.C. Sec. 1064(c), but an incontestable mark cannot be challenged for being "merely descriptive." FILIPINO YELLOW PAGES V. ASIAN JOURNAL PUBLICATIONS FACTS: Filipino Yellow Pages sold a consumer directory named "Filipino Yellow Pages" into the California market. Asian Journal Pubs published the "Filipino Consumer Directory" into the California market. Filipino Yellow Pages filed a complaint, alleging trademark infringement and unfair competition. Asian Journal Pubs successfully moved for summary judgment, claiming that the term Filipino Yellow Pages is generic, and thus cannot be the subject of trademark protection. Filipino Yellow Pages appealed, claiming that the term is protectable as a descriptive word with secondary meaning. ISSUE: Whether the term "Filipino Yellow Pages" is generic with respect to telephone directories targeted at the FilipinoAmerican community, and thus, cannot be the subject of trademark protection under any circumstances, even with a showing of secondary meaning. HELD: The term is generic. Filipino Yellow Pages was unable to establish the trademark protectibility of "Filipino Yellow Pages" as a descriptive mark with secondary meaning. The grant of summary judgment in favor of AJP was proper.

"A `generic' term is one that refers, or has come to be understood as referring, to the genus of which the particular product or service is a species. It cannot become a trademark under any circumstances." As explained by one commentator, a generic term is "the name of the product or service itself -what [the product] is, and as such . . . the very antithesis of a mark." Courts sometimes refer to generic terms as "common descriptive" names, the language used in the Lanham Act for terms incapable of becoming trademarks. A descriptive term, unlike a generic term, can be a subject for trademark protection under appropriate circumstances. Although descriptive terms generally do not enjoy trademark protection, a descriptive term can be protected provided that it has acquired "secondary meaning" in the minds of consumers, i.e., it has "become distinctive of the[trademark] applicant's goods in commerce." The test whether or not the mar is generic is "who-are-you/what-are-you" test: "A mark answers the buyer's questions `Who are you?'`Where do you come from?' `Who vouches for you?' But the [generic] name of the product answers the question `What are you?' " . Under this test, if the primary significance of the trademark is to describe the type of product rather than the producer, the trademark is a generic term and [cannot be] a valid trademark. In the case, the parties do not dispute that "Filipino" and "yellow pages" are generic terms. The word "Filipino" is a clearly generic term used to refer to "a native of the Philippine islands" or "a citizen of the Republic of the Philippines." The term "yellow pages" has been found to be a generic term for "a local business telephone directory alphabetized by product or service." It was originally not a generic term but became generic over time. The issue then becomes whether combining the generic terms "Filipino" and "yellow pages" to form the composite term "Filipino Yellow Pages" creates a generic or a descriptive term. A descriptive term can be protected as a valid trademark only with a showing of secondary meaning. Secondary meaning can be established in many ways, including (but not limited to) direct consumer testimony; survey evidence; exclusivity, manner, and length of use of a mark; amount and manner of advertising; amount of sales and number of customers; established place in the market; and proof of intentional copying by the defendant. In this case, the only evidence of secondary meaning offered by Filipino Yellow Pages was contained in the declaration of its founder and president, Oscar Jornacion. If a supposedly valid mark is not federally registered, as in the case of Surgicenters, the plaintiff has the burden of proving nongenericness once the defendant asserts genericness as a defense. If a mark is unregistered, as in the case, the plaintiff bears the burden of showing that the mark it not generic. Moreover, the Surgicenters case was able to establish that the term surgicenter is generic, through 45 exhibits. In the case, there were only three pieces of evidence, which are not as weighty. Also, Filipino Yellow Pages failed to establish the terms secondary meaning as evidence of secondary meaning was inadmissible, lacking in substantial probative value, or both. Thus "Filipino Yellow Pages," even if descriptive rather than generic, is not a valid and protectible trademark with respect to a telephone directory for the FilipinoAmerican community.