IP Law Daily, TRADEMARK—S.D.N.Y.: Online advertising network’s use of “collective” was descriptive, (Mar 25, 2014)

By Cheryl Beise, J.D.

Online advertising company Collective, Inc.’s use of the term “collective” as a stand-alone term and in three registered composite marks—“Collective Network,” “Collective Video,” and “C Collective The Audience Engine”—as a matter of law was descriptive of the company’s network advertising services, the federal district court in New York City has decided (Cross Commerce Media, Inc. v. Collective, Inc., March 24, 2014, Forrest, K.). The court, however, declined to decide on summary judgment whether Collective’s use of “collective” had acquired secondary meaning.

Cross Commerce Media, Inc. (“CCM”) is in the business of data management, analytics, and modeling. CCM obtained federal registration for the standard character mark “Collective Intelligence” in May 2012. In late 2011, CCM began using the stylized mark “Collective[i].” CCM had filed intent-to-use applications to register the marks “Collectivei,” “Collective IQ,” and “CIQ.”

In April 2013, CCM filed a declaratory judgment action, seeking a ruling that its use of the mark “Collective[i]” did not infringe Collective’s trademarks. Collective counterclaimed for infringement of its registered and unregistered marks under the Lanham Act and for unfair competition under New York law.

Collective owned federal registrations for three marks incorporating the term “collective” —Collective Network,” “Collective Video,” and “C Collective The Audience Engine” (the “Collective Marks”). The marks were registered in connection with Internet-based advertising networking, namely, connecting online publishers with online advertisers for buying and selling online advertisements, and connecting online advertisers with online publishers of video content.

CCM moved for partial summary judgment on two issues: (1) that the word “collective,” on a stand-alone basis and as used by Collective, was descriptive, and (2) that, even if Collective could establish that it has a valid trademark in “collective” as a stand-alone mark, any such rights were commercially weak. Arguing that the word “collective” was not merely descriptive, and that the issue of the strength of the mark was not ripe for decision at this time, Collective moved to continue or defer the motion pursuant to Federal Rule of Civil Procedure 56(d) in light of ongoing discovery.

Descriptiveness. The court granted CCM’s motion to the extent it sought a ruling that the word “collective,” as used by Collective, was descriptive. It was undisputed that Collective did not own a trademark registration in “collective” as a stand-alone mark.

The court noted that the word “collective” was defined in the online Merriam-Webster Dictionary as: “denoting a number of persons or things considered as one group or whole”; “formed by collecting: aggregated”; and “of, relating to, or being a group of individuals.” This was precisely the descriptive manner in which Collective used the word, including in the Collective Marks themselves, according to the court. Collective was an advertising network that offered “a collection or collective of advertising opportunities.” The word “collective” thus literally described “an immediate idea of the ingredients, qualities or characteristics” of Collective’s product, the court determined.

This conclusion was reinforced by CCM’s evidence showing third- party usage of the word “collective,” as well as the PTO’s treatment of applications containing the word, the court observed. The word “collective” was used in the name of over 7,000 businesses and in over 25,000 Internet domain names. More than a dozen companies in the digital advertising and marketing use the term “collective.” In addition, the PTO has either required disclaimer of the use of the word “collective” as being descriptive or rejected the application entirely on the same basis in 186 instances.

The discovery requested by Collective could not reasonably be expected to create a genuine issue of material fact as to the descriptiveness of the word “collective,” the court said. CCM’s motion for partial summary judgment was therefore granted and Collective’s Rule 56(d) was denied as to the issue of descriptiveness.

Mark strength. CCM’s motion also asked for a determination that Collective’s rights in the “collective” as a stand-alone mark were “heavily diluted” and “commercially weak.” Although the extensive third-party usage of the word “collective” was persuasive evidence of weakness, it was insufficient by itself, the court said.

The strength-of-mark inquiry required an analysis of secondary meaning, which could not be resolved without further discovery, according to the court. In support of its Rule 56(d) motion, Collective’s counsel explained the need for additional discovery, in particular, for expert survey research in order to develop evidence as to the strength of “collective” as a stand-alone mark.

CCM’s motion for partial summary judgment on the issue of mark strength was denied, and Collective’s Rule 56(d) motion was granted.

The case is No. 13 Civ. 2754 (KBF).

Attorneys: Jason Andrew Roth (Davis & Gilbert LLP) for Cross Commerce Media, Inc. Eric J. Andalman (Dentons US LLP) for Collective, Inc.

Companies: Cross Commerce Media, Inc.; Collective, Inc.

Cases: Trademark NewYorkNews