South-Western Legal Studies in Business

Descriptive Marks Due Little Protection
Description Appeals court held that a registered descriptive trademark for a product not well known could not sue another company with a similar mark for infringement. The products were not identical and, given the size of the mark holder, there was little likelihood of confusion.
Topic Intellectual Property
Key Words Trademark, Descriptive Mark, Infringement, Secondary Meaning
C A S E   S U M M A R Y
Facts Custom Vehicles made vans that the owner could convert in about an hour from a mobile office to a camper (and back). They trademarked the vehicle as the “Work-N-Play.” Another company, Forest River, then made a van with a ramp door at the back and a space for a snowmobile or motorcycle to be housed and transported. They called it the “Work and Play” vehicle. Custom sued Forest for trademark infringement. The district court held for Forest. Custom appealed.
Decision

Affirmed. Work-N-Play is a descriptive mark. Such a mark is not a complete description of the product, but it picks out a characteristic that figures prominently in it. However, it was not well known; sales of Custom vehicles were small, so the name did not have much recognition; that is, it did not have secondary meaning because it was famous. Until a descriptive mark gets secondary meaning, such as the cereal “All Bran,” it is not protected. Registration alone does not establish control in the market. Forest could use the term Work and Play and few, if any consumers, would be confused as to the origin of the product.

Citation Custom Vehicles v. Forest River, 476 F.3d 481 (7th Cir., 2007)

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