does not apply, who acquired priority rights depends on who accomplished "the first actual use." The defendant claims that actual use requires "an ongoing program to exploit the mark." Anvil Brand, Inc. v. Consolidated Foods Corp., 464 F. Supp. 474, 481 (S.D.N.Y. 1978) (quoting La Societe, 495 F.2d at 1271). The plaintiff claims that in a contest between two companies who began using a mark at approximately the same time, intentions matter. Citing George Washington Mint v. Washington Mint, Inc., 349 F. Supp. 255 (S.D.N.Y. 1972), TTMP states that because it intended to use the "Soaker" mark prior to Larami, it established the first actual use.
Larami properly cites the law in this circuit; TTMP does not. Indeed, the plaintiff either misreads or misrepresents George Washington Mint. That case says nothing about honoring intentions in a contest over who used a mark first. Instead, it holds that the prior user is not necessarily the one who made the first sale, but the one who received the first order for trademarked goods. 349 F. Supp. at 261. Since Larami actually shipped "Super Soakers" on August 24, 1990 and TTMP received its first order on August 28, 1990, George Washington Mint supports Larami, not TTMP.
Well-established principles and case law governing first use also favor Larami. "Trademark use must be bona fide, i.e., more than a pro forma use; for example, a single sale, for the sole purpose of laying the foundation for a claim of use, cannot be seriously considered." 3 R. Callmann, § 19.09 at 26 (similar excerpt in earlier edition of treatise Quoted in D.M. & Antique Import Corp. v. Royal Saxe Corp., 311 F. Supp. 1261, 1270 (S.D.N.Y. 1970)); Windows User, Inc. v. Reed Business Publishing Ltd, 795 F. Supp. 103, 108 ("The talismanic test is whether or not the mark was used 'in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark.'") (citation omitted); Jaffe v. Simon & Schuster, 3 U.S.P.Q.2d 1047, 1049 (S.D.N.Y. 1987) (nominal or token sales to personal friends and relative not sufficient); Scholastic, Inc. v. Macmillan Inc., 650 F. Supp. 866, 2 U.S.P.Q.2d 1191, 1196 (S.D.N.Y. 1987) ("Adoption and a single use of the mark may be sufficient to permit registration of the mark, but more is required if its owner seeks to use the mark to stifle the efforts of others."); D.M. & Antique Import Corp. v. Royal Saxe Corp., 311 F. Supp. 1261, 1270-71 (S.D.N.Y. 1970) ("The mark must be so used that it comes to the attention of wholesale or retail purchasers in association with, and as a means of identifying, the product. . . . First user does not refer to the party who was prior in time, but 'first in the specific trade.'") (citations omitted).
In describing the May 15, 1990 sale, TTMP's president stated: "What I did was I bought a Soaker gun from Blue Box and I sold it to a person in Florida, out of state, trying to establish a trademark name, which I do as a matter of casual sale." Amron Dep. at 121-22. That is plainly inadequate to establish priority of use.
Between the May 15 sale and Larami's first shipment of "Super Soakers" on August 24, TTMP's only public action involving the mark was to apply to register "The Totally Rad Soaker" trademark. Since § 1057(c) of the Trademark Law Revision Act has no office to perform here, the plaintiff's intent-to-use application has no relevance to a claim of prior use. See, e.g., Jaffe, 3 U.S.P.Q.2d at 1049 ("The fact that the plaintiff was the first to file an application to register the mark does not bolster his case. Ownership of a mark is not determined by the race to the Patent Office, but by the race to the market.").
The lack of prior use dooms plaintiff's suit. TTMP cannot show first actual use even though the Court has resolved all ambiguities of fact in favor of TTMP--as it must on this motion for summary judgment. Given the strength of defendant's second argument, however, I decline to rest my holding solely on first use grounds.
2. Type of Trademark and Secondary Meaning
The core inquiry in § 43(a) cases is whether the use of a mark causes consumer confusion. But courts will not address this issue unless the plaintiff's mark qualifies for § 43(a) protection. See, e.g., Bristol-Myers, slip op. at 6600. Qualification, in turn, requires classifying the mark according to the system established by Judge Friendly in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). That system features four classes of marks, arrayed in ascending order of strength: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. Abercrombie & Fitch, 537 F.2d at 9.
Suggestive and arbitrary marks "are deemed inherently distinctive and entitled to protection" because "their intrinsic nature serves to identify a particular source of a product." Two Pesos, 112 S. Ct. at 2757. A generic mark is never entitled to protection. Id. A descriptive mark is eligible for protection "if it 'has become distinctive of the [producer's] goods in commerce.' This acquired distinctiveness is generally called 'secondary meaning.'" Id. (citations omitted). Secondary meaning attaches to a particular mark when "a significant number of prospective purchasers understand the term when used in connection with the particular kinds of goods involved . . . as indicative of an association with a specific entity." Bernard v. Commerce Drug Co., 964 F.2d 1338, 1343 (2d Cir. 1992) (citation omitted).
Since a finding that "Soaker" is descriptive would also require TTMP to show secondary meaning, the parties dispute how to characterize the mark. TTMP asserts that "Soaker" is suggestive, while Larami argues it is descriptive.
The Second Circuit recently reviewed the meanings of the two terms:
A descriptive mark is one that "'forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.'" Abercrombie & Fitch, 537 F.2d at 11 (citation omitted). "A term can be descriptive in two ways. It can literally describe the product, or it can describe the purpose or utility of the product." 20th Century Wear v. Sanmark-Stardust, 747 F.2d 81, 88 (2d Cir. 1981), cert. denied, 470 U.S. 1052, 84 L. Ed. 2d 818, 105 S. Ct. 1755 (1985). A term is suggestive "'if it requires imagination, thought and perception to reach a conclusion as to the nature of goods.'" Abercrombie & Fitch, 537 F.2d at 11 (citation omitted).
Bristol-Myers, slip op. at 6602-03.
Despite these well-established definitions, courts have struggled with the distinction between suggestive and descriptive marks ever since Abercrombie & Fitch. Indeed, the Second Circuit has observed that determining the appropriate category requires "pigeonholing or labeling," and "has always been a slippery business." 20th Century Wear, Inc. v. Sanmark-Stardust, Inc., 747 F.2d 81, 87 (2d Cir. 1981). Acknowledging this again in Bristol- Myers, the Court stated that "the line between descriptive and suggestive may be difficult to discern." Slip op. at 6603.
While this determination is often difficult, in the case at bar there can be no doubt as to the proper classification. When a court assesses a trademark it must be mindful that "the focus in categorizing a mark is on how the words are used in context rather than their meaning in the abstract." Id. at 6604 (emphasis added). As a leading trademark commentator explained: "the word 'apple' would be arbitrary when used on personal computers, suggestive when used in 'Apple-A-Day' on vitamin tablets, descriptive when used in 'Tomapple' for combination tomato-apple juice and generic when used for apples." 1 J.T. McCarthy, Trademarks and Unfair Competition § 11:22, at 498-99 (2d ed. 1984), quoted in Bristol-Myers, slip op. at 6605. In the context of a water gun, the term "Soaker" describes an essential "purpose or utility" of the product. It is therefore a descriptive mark.
TTMP relies on the Second Circuit's decision in Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70 (2d Cir. 1988). In Hasbro, the Court held that the term "Gung-Ho" was suggestive as applied to a toy Marine action figure because the term merely described elements of the personality attributed to the toy. 858 F.2d at 75. That case is a far cry from the case at bar. "Soaker" describes what a water gun is and does. Indeed, the conclusion that "Soaker" is descriptive "is bolstered by the concern that 'exclusive use of the term might unfairly "monopolize" common speech.'" Bernard, 964 F.2d at 1342 (quoting 20th Century Wear, 747 F.2d at 90). If the Court were to hold that the "Soaker" mark is suggestive as applied to water guns, TTMP would deplete the language of a useful descriptive term.
A review of trademark cases where marks were held descriptive further supports this Court's conclusion. See Bristol-Myers, slip op. at 6604-05 ("PM" for analgesic pain reliever with a sleep aid); Bernard, 964 F.2d at 1341 ("Arthriticare" for analgesic gel designed to relieve arthritis pain); Papercutter, Inc. v. Fay's Drug Co., 900 F.2d 558, 563-64 (2d Cir. 1990) ("Papercutter" for corporation which sells paper designs and ornaments); Thompson Medical Co., Inc. v. Pfizer Inc., 753 F.2d 208, 216 (2d Cir. 1985) ("Sportscreme" for topical heat analgesic); 20th Century Wear, 747 F.2d at 87-88 ("Cozy Warm ENERGY-SAVERS" for pajamas and nightgowns); Feathercombs, Inc. v. Solo Prods. Corp., 306 F.2d 251, 255 (2d Cir.) ("Featherlight" for hair rollers), cert. denied, 371 U.S. 910, 9 L. Ed. 2d 170, 83 S. Ct. 253 (1962); see also Remington Prods, Inc. v. North Am. Philips Corp., 892 F.2d 1576, 1580-82 (Fed. Cir. 1990) ("Travel Care" for pressing irons); Karmikel Corp. v. May Dept. Stores Co., Inc., 658 F. Supp. 1361, 1370 (S.D.N.Y. 1987) ("Fast Track" for athletic wear); Scholastic, Inc. v. Macmillan, Inc., 650 F. Supp. 866, 871 (S.D.N.Y. 1987) ("Classroom" for magazine directed at teachers and students).
In urging the Court to view its mark as suggestive, TTMP also notes that the Trademark Office decided to register the mark "The Totally Rad Soaker." TTMP correctly cites several Second Circuit cases for the proposition that registration affords a rebuttable presumption that the mark is more than merely descriptive. See, e.g., Papercutter, Inc. v. Fay's Drug Co., Inc., 900 F.2d 558, 563 (2d Cir. 1990).
But this argument is flawed. First, the Trademark Office has not actually registered "The Totally Rad Soaker." Larami has filed a Notice of Opposition and, as far as the Court is aware, the mark has not yet been registered. Second, and more importantly, "the presumption may be rebutted by a showing that the mark is descriptive, not suggestive." Id. As the Second Circuit did in Papercutter, I hold that the presumption has been rebutted.
Because the term "Soaker" is descriptive, TTMP must demonstrate secondary meaning. In order to do that, TTMP must answer "the crucial question [of] whether the public is moved to buy the product because of its source. To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself." Murphy v. Provident Mut. Life Ins. Co. of Philadelphia, 923 F.2d 923, 928 (2d Cir. 1990) (quoting Inwood Laboratories, Inc., v. Ives Laboratories, Inc., 456 U.S. 844, 851, 72 L. Ed. 2d 606, 102 S. Ct. 2182 n.11 (1982)). But the plaintiff has not even addressed secondary meaning in its papers. Given the governing law and the facts of this case, plaintiff's omission is not surprising.
"To qualify for trademark protection, an owner of a descriptive mark must demonstrate that the mark had acquired secondary meaning before its competitor commenced use of the mark." PaperCutter, 900 F.2d at 564. "Even if secondary meaning is acquired, it will not prevent the use of the term by one whose use bad begun before the secondary meaning is acquired." Brown v. Quiniou, 744 F. Supp. 463, 469-70 (S.D.N.Y. 1990) (quoting Saratoga Vichy Spring Co., Inc., 625 F.2d 1037, 1043 (2d Cir. 1980)).
TTMP would have to show that it acquired secondary meaning prior to Larami's first shipment of water guns on August 24, 1990. Since the only sale it made prior to August 24, 1990 was the single sale of a water gun on May 15, 1990, such a showing is inconceivable. For plaintiff to pursue its claims at trial would therefore be an exercise in futility.
3. Likelihood of Confusion
If a mark is not inherently distinctive, secondary meaning is a prerequisite for protection under section 43(a) of the Lanham Act. E.g., Two Pesos, 112 S. Ct. at 2758. Since TTMP cannot demonstrate that "Soaker" is either inherently distinctive or has acquired secondary meaning, I need not consider Larami's likelihood of confusion argument.
For the reasons stated above, defendant's motion for summary judgment is granted. The Clerk of the Court is directed to dismiss the complaint with prejudice.
It is SO ORDERED.
Dated: New York, New York
October 21, 1992
CHARLES S. HAIGHT, JR.