IP Law Daily, TRADEMARK—D. Del.: Overhead door company’s registered DIAMOND STATE DOOR mark was not protectible, (May 25, 2023)

By Kevin M. Finson, J.D.

The mark DIAMOND STATE DOOR was invalid because it was geographically descriptive and lacked secondary meaning.

The federal district court in Wilmington has dismissed trademark infringement and related claims brought by Diamond State Door, LLC against a competitor using the name “Diamond State Overhead Doors.” The court found that the plaintiff’s registered DIAMOND STATE DOOR mark was invalid for being geographically descriptive and lacking secondary meaning. Because Diamond State Door failed to present sufficient evidence from which a reasonable jury could find acquired distinctiveness, the court granted summary judgment to the defendant on all claims (Diamond State Door, LLC v. Diamond State Pole Buildings, LLC, May 24, 2023, Andrews, R.).

Diamond State Door, LLC (Diamond Door) was a seller and installer of doors under the mark DIAMOND STATE DOOR. In 2020, Diamond Door attempted to register the mark with the USPTO as inherently distinctive, but this application was rejected because the term “Diamond State” was deemed geographically descriptive. Diamond Door then successfully registered its mark with a claim of acquired distinctiveness.

In 2018, Diamond State Pole Buildings, LLC (Diamond Pole) opened a division of its business under the name “Diamond State Overhead Doors.” In 2021, Diamond Door sued Diamond Pole for trademark infringement and false designation of origin under the Lanham Act, violation of the Delaware Deceptive Trade Practices Act, and tortious interference with prospective business advantage under Delaware common law. Diamond Pole moved for summary judgment on each count on the ground that Diamond Door’s DIAMOND STATE DOOR mark is not protectible.

Trademark infringement. Diamond Pole argued that the plaintiff’s DIAMOND STATE DOOR mark was not protectable because it was geographically descriptive and lacked secondary meaning. To show secondary meaning, Diamond Door presented evidence of exclusive use for six years; advertising expenditures; sales figures; and instances of confusion.

The court was not persuaded by Diamond Door’s evidence. Six years of exclusive use was a short period of time that did not weigh in favor of secondary meaning. Diamond Pole’s advertising expenditures were modest (ranging from $1,018 to a peak of $43,492 in 2019) and not sufficient to create an association between DIAMOND STATE DOOR and the plaintiff’s services in the mind of the purchasing public. Plaintiff’s evidence of actual confusion consisted of statements from six individuals, but the court found that the testimony of two witnesses was not probative and the remaining evidence was insufficient support a finding of secondary meaning. Diamond Door’s sales figures had increased over the six-year period, rising from $129,016 in 2013 to $1.2 million in 2019, but this was not enough to establish secondary meaning, particularly because the evidence lacked context to show how much of the market was reached.

Diamond Door’s evidence did not rise to the level of creating a genuine dispute of material fact which required resolution by a factfinder, according to the court. A finding by a jury that the mark had established such a secondary meaning would be “an impermissible leap of faith,” the court said. Accordingly, the court granted summary judgment in favor of Diamond Pole on the trademark infringement and unfair competition claims, as well on the Deceptive Trade Practices Act claims, which was based on trademark infringement.

Tortious interference. State law tortious interference depends on some underlying wrongful act, and the only alleged wrongful act was use of the Diamond Door mark. Because the court had already held that this mark was not protectable, use of it was not wrongful. The court granted summary judgment to Diamond Pole on this claim as well.

The Case is No. 1:21-cv-01258-RGA.

Attorneys: Thomas H. Kramer and Anthony N. Delcollo (Offit Kurman, P.A.) for Diamond State Door, LLC. John C. Andrade, Elio Battista, Jr. and Kyle F. Dunkle (Parkowski, Guerke & Swayze, P.A.) for Diamond State Pole Buildings, LLC, d/b/a Diamond State Overhead Doors.

Companies: Diamond State Door, LLC; Diamond State Pole Buildings, LLC, d/b/a Diamond State Overhead Doors

Cases: Trademark DelawareNews