Cases (8th Cir. 2005) Frosty treats, Inc. v. Sony Computer Entertainment America Issue: Whether Treats” had secondary meaning “Frosty Held: No secondary meaning not prominently labeled on vans, surveys don’t – indicate a link, some sales success/exclusivity, but insufficient (SDNY 2004) Cartier, Inc. v. Four Star Jewelry Creations, Inc. Battle of experts to show secondary meaning in watch design Found selection of survey locations and questions juiced the survey Δ’s Outlier location ends up validating selection criteria Π’s survey was in a luxury watch store where people were likely to buy the watch Π’s and know the brand (2d Cir. 2012) Louboutin v. Yves Saint Laurent Ford Survey Example Test group shown red sole shoe drawing, control got blue sole Asked whether they’ve purchased a show like this, then whether it was from a single brand, then whether they could ID the specific brand (SDNY 2013) JT Colby & Co. v. Apple Inc. owned Inc.” Sued Apple to stop them from using iBooks Π “iBooks – Held: No secondary meaning Reasoning Applied factors lack of sales success, lack of association” in the book – “brand publishing industry, and non-exclusive use of the mark Focus on normal consumers that would consider purchasing Note: Dominant feature of the mark was a light bulb with an in it, not “i” “iBooks” DISTINCTIVENESS GENERICISM – Analysis Factors Pilates Dictionary definition Generic use of the term by competitors and persons in the trade Competitors that change behavior in response to cease and desist letters don’t count as evidence of non-genericism own generic use (Apple Job’s generic use of Store”) Π’s v. Amazon – “App Generic use in the media Consumer surveys Existence of commonly used alternative means to describe the product/service Note: No dissection of the mark (Surgi-Centers), Foreign words translate to English Approaches Genus/Species test Who are you vs. What are you? (Apple v. Amazon) Common descriptive name test Competitive alternatives? Surveys Survey Thermos
Cases Frosty treats, Inc. v. Sony Computer Entertainment America (8th Cir. 2005) Issue: Whether “Frosty Treats” had secondary meaning Held: No secondary meaning – not prominently labeled on vans, surveys don’t indicate a link, some sales success/exclusivity, but insufficient Cartier, Inc. v. Four Star Jewelry Creations, Inc. (SDNY 2004) Battle of experts to show secondary meaning in watch design Found Δ’s selection of survey locations and questions juiced the survey Outlier location ends up validating Π’s selection criteria Π’s survey was in a luxury watch store where people were likely to buy the watch and know the brand Louboutin v. Yves Saint Laurent (2d Cir. 2012) Ford Survey Example Test group shown red sole shoe drawing, control got blue sole Asked whether they’ve purchased a show like this, then whether it was from a single brand, then whether they could ID the specific brand JT Colby & Co. v. Apple Inc. (SDNY 2013) Π owned “iBooks Inc.” – Sued Apple to stop them from using iBooks Held: No secondary meaning Reasoning Applied factors – lack of sales success, lack of “brand association” in the book publishing industry, and non-exclusive use of the mark Focus on normal consumers that would consider purchasing Note: Dominant feature of the mark was a light bulb with an “i” in it, not “iBooks” DISTINCTIVENESS – GENERICISM Analysis Pilates Factors Dictionary definition Generic use of the term by competitors and persons in the trade Competitors that change behavior in response to cease and desist letters don’t count as evidence of non-genericism Π’s own generic use (Apple v. Amazon – Job’s generic use of “App Store”) Generic use in the media Consumer surveys Existence of commonly used alternative means to describe the product/service Note: No dissection of the mark (Surgi-Centers), Foreign words translate to English Approaches Genus/Species test Who are you vs. What are you? (Apple v. Amazon) Common descriptive name test Competitive alternatives? Surveys Thermos Survey
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