IP Law Daily, TRADEMARK—D.N.J.: Registration on supplemental register not prima facie evidence of mark’s validity, (Aug 19, 2024)

By Patricia K. Ruiz, J.D.

The plaintiff failed to show her mark, which was no more than descriptive, acquired secondary meaning.

The U.S. District Court for the District of New Jersey denied a motion for summary judgment by a plaintiff alleging infringement of her mark SILENT SKATE, finding that its registration on the supplemental register did not afford it a presumption of validity and that the trademark owner failed to provide evidence that the mark was more than descriptive or that it acquired secondary meaning. The court granted the defendants’ cross-motion for summary judgement (Richardson v. Cascade Skating Rink, No. 1:19-cv-08935-ESK-EAP (D.N.J. Aug. 16, 2024)).

Background. An individual owns the trademark SILENT SKATE, listed on the USPTO supplemental register under Registration No. 5,699,688. The mark was registered on March 12, 2019, and indicates it was first used on December 7, 2015, and first used in commerce on May 6, 2016. It relates to arranging, organizing, conducting, and hosting social entertainment events, namely, skating events. The mark disclaims exclusive right to use the term SKATE. Silent skating refers to events in which participants roller skate while wearing headphones and are able to flip through three different music options. The trademark has at times included her nickname, Peachie, while using her mark in commerce and has not regularly included trademark symbols or otherwise indicated that SILENT SKATE is trademarked. She has spent approximately $3,500 on expenses related to her mark and does not have a monthly marketing budget. She has never licensed her mark for a fee and polices her mark, having sent approximately 12 to 15 cease-and-desist letters to avoid market confusion.

Silent Sk8. After attending a “Silent Skate” hosted by Cascade Skating Rink and promoted by Live Life Headphones LLC, the trademark owner alleged she sent a cease-and-desist letter to both defendants, and an independent contractor for Live Life emailed the trademark owner to inform her that her mark would not be used in the future; however, “Silent Skate” and “Silent Sk8” events continued to be held. Live Life applied for the trademark SILENT SK8, which was rejected by the USPTO in a December 6, 2020, letter. Final refusal was premised in part on a likelihood of confusion with the plaintiff’s mark and in part on the examining attorney’s conclusion that the applied-for mark was merely descriptive.

Trademark infringement; protectability of generic marks. The plaintiff filed suit alleging trademark infringement on March 25, 2019. In a motion for summary judgment, the defendants argued the plaintiff cannot meet her burden of showing that she owns a valid, protectable mark, as her mark was filed on the supplemental register, rather than the principal register; thus, it does not carry a presumption of validity. The defendants argued that generic marks are never protectable and that descriptive marks are only protectable if the mark has acquired a secondary meaning. They argued the plaintiff’s mark is generic because “silent” is common term for events featuring three-channel headphones, plaintiff has not supported her position with consumer surveys or trade journals, and there is no genuine dispute that consumers identify SILENT SKATE with the service rather than the plaintiff’s brand. Alternatively, the defendants claimed the mark is merely descriptive, relying in part on the USPTO’s denial of Live Life’s similar application. Finally, if the mark is valid, the defendants argued they engaged in fair use.

Supplemental register. The court agreed that registration on the supplemental register does not serve as prima facie evidence of a mark’s validity; however, the mark may be valid and legally protectable if the public recognizes it as identifying the claimant’s goods or services and distinguishing them from those of others. Courts generally determine the protectability of a mark by identifying its classification: generic, descriptive, suggestive, or arbitrary or fanciful. Generic terms receive no protection, and descriptive terms only receive trademark protection if they have acquired a secondary meaning in the minds of the consuming public. Classification of a term and whether it has acquired a secondary meaning are questions of fact. However, the court concluded no reasonable jury could conclude the mark is inherently distinctive and entitled to protection and entered summary judgment in favor of the defendants.

No more than descriptive. First, the court found the plaintiff’s mark is no more than descriptive. The trademark owner has the burden of proving her mark is protectable because it does not appear on the principal register. The court disagreed with the trademark owner that the mark is suggestive because the word “silent” is an illusion, finding that no imagination is needed for a customer to conclude that SILENT SKATE refers to skating in silence, whether the silence is perceived by the skaters themselves or others in the event space. The fact that the skaters may be listening to music or making noise themselves does not make the mark suggestive. The court found that the fact that SILENT SKATE may not be all-inclusive of the customer experience does not lead to a distinctive classification. Finally, the relative wittiness of the mark is not determinative of whether it is suggestive.

Because the court further found that the mark has not acquired a secondary meaning, it was not necessary to decide whether SILENT SKATE is generic or descriptive.

No secondary meaning. The more descriptive a term is, the higher the evidentiary bar. A plaintiff must establish secondary meaning in a mark at the time and place that the defendant began use of the mark. The court analyzed the relevant factors and concluded that the trademark owner, at times by her own admission, failed to establish that SILENT SKATE has acquired a secondary meaning. First, with respect to size, sales, and advertising, the plaintiff conceded her business never generated more than $20,000 in a year, she does not have an advertising budget, and she has not invested more than $3,500 in her mark. Second, the plaintiff admitted she has been inconsistent in her use of SILENT SKATE, seldom including trademark or registration notices and often adding her nickname. Third, the plaintiff did not directly address the defendants’ copying of SILENT SKATE but alleged they used a confusingly similar mark—Silent Sk8. Fourth, the plaintiff provided no evidence that SILENT SKATE acquired a secondary meaning. Thus, the court found the trademark owner failed to establish protectability of the SILENT SKATE mark.

The Case is No. 1:19-cv-08935-ESK-EAP.

Judge: Kiel, E.

Attorneys: Dellisa Richardson, pro se. Jorge Robert Salva (Scarinci Hollenbeck LLC) for Cascade Skating Rink.

Companies: Cascade Skating Rink

Cases: Trademark NewJerseyNews