SW Legal studies in Business

Marks That Have No Public Recognition Have Little Protection
Description Appeals court held that in a contest between two firms over the use of a particular term, the complaining firm failed to show that the other firm had infringed on its use of the term because it had not acquired secondary meaning.
Topic Intellectual Property
Key Words Trademark; Infringement; Secondary Meaning
C A S E   S U M M A R Y
Facts U.S. Search, LLC is an executive recruiting and placement firm that specializes in recruiting for the plastics industry. The company was founded in 1998 and has one recruiter, the president of the company. U.S. Search.com is a publicly traded company that, since 1995, provides access to online public record information over the Internet and by a toll-free number, 1-800-US-SEARCH. In 1996, Search.com filed a service mark application for 1-800-US-SEARCH; the mark was registered in 1998. Search, LLC sued Search.com claiming violations of the Lanham Act. Search, LLC also then filed a trademark application to register U.S. Search as a service mark, which the Patent and Trademark Office refused to issue, citing likely confusion. The district court dismissed the suit; Search, LLC appealed.

Affirmed. Search, LLC failed to show that the term U.S. Search for executive recruiting services was suggestive to consumers and, consequently, it was not entitled to service mark protection. Further, the term U.S. Search does not have secondary meaning. Secondary meaning is defined as "the consuming public's understanding that the mark, when used in context, refers not to what the descriptive word ordinarily describes, but to the particular business that the mark is meant to identify." The following factors are relevant to determining secondary meaning: "1) advertising expenditures, 2) consumer studies linking the mark to a source, 3) sales success, 4) unsolicited media coverage of the product, 5) attempts to plagiarize the mark, and 6) the length and exclusivity of the mark's use. Search, LLC failed to show evidence of such recognition.

Citation U.S. Search, LLC v. U.S. Search.com, 300 F.3d 517 (4th Cir., 2002)

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