SW Legal studies in Business

Descriptive Trademark without Secondary Meaning Cannot Be Enforced
Description

Appeals court held that a trademark that had clear geographic meaning was, at best, a descriptive mark. As such, it receives no protection from infringement. To become enforceable, a descriptive mark must have secondary meaning that goes beyond its original meaning.

Topic Intellectual Property
Key Words

Trademark; Generic; Descriptive; Secondary Meaning; Mark Cancellation

C A S E   S U M M A R Y
Facts

Douglas, the founder of OBX-Stock, invented OBX as an abbreviation for the “Outer Banks” of North Carolina. OBX-Stock used the letters OBX on oval stickers for cars to indicate that the cars were from or had visited the Outer Banks. OBX was also applied to souvenirs and other items sold in stores at the Outer Banks. The company obtained trademark registration for OBX for use in connection with a wide range of goods and services. In practice, OBX is widely used by many businesses that advertise their Outer Banks location. Bicast began to sell stickers printed with “OB Xtreme.” OBX-Stock sued Bicast for trademark infringement. The district court held for Bicast, finding that OBX was either a generic mark or a descriptive mark without secondary meaning and so was not valid. OBX-Stock appealed.

Decision

Affirmed. A generic mark can never be valid under any circumstance. A descriptive mark cannot be a valid trademark without evidence of secondary meaning. The secondary meaning in connection with geographically descriptive marks means that the mark no longer causes the public to associate the goods with the geographical location, but to associate the goods with a particular product or source of the product. OBX was adopted, promoted, and received as an abbreviation for “Outer Banks.” As such, it is geographically descriptive. It did not have secondary meaning. The fact that the mark was registered does not make it more valid, so it cannot be enforced.

Citation OBX-Stock, Inc. v. Bicast, Inc., 558 F.3d 334 (4th Cir., 2009)

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