(terminating with the introduction of Black & Decker's "SnakeLight" in August 1994). Under either calculation, however, the length and exclusivity of Defendants' use of the mark is insufficient to show that secondary meaning had been established before Black & Decker began its use of the mark.
Other evidence which weighs in favor of summary judgment includes Dunsford's failure to file any federal or state trademark applications on his mark prior to 1995, and his failure to use the "TM" symbol in connection with the "Snakelight" name prior to 1995. Plaintiff's 3(g) Statement PP 47-50. Further, prior to 1995, Dunsford never placed any label or other indication on his product identifying the name or source of the product. Id. P 31.
In sum, Defendants have not shown that the consuming public recognizes that Dunsford's "Snakelight" emanates from a single source. There is no showing that in the minds of consumers, "the primary significance of [the] term is to identify the source of the product rather than the product itself." Inwood Labs., 456 U.S. at 851 n.11 (emphasis in original). Because Defendants have not shown that their term "Snakelight" has attained secondary meaning, the mark is not protectible as a matter of law. Summary judgment is granted in favor of Black & Decker as to Count I of its Complaint and Count III of Defendants' Counterclaim.
B. Other Claims
Having determined that Defendants' name "Snakelight" is not protectible as a matter of law, summary judgment must also be granted as to Counts II and III of Black & Decker's Complaint and Counts I and IV of Defendants' Counterclaim.
Count I of Defendants' Counterclaim alleges common law trademark infringement. In order to prevail on this claim, Defendants must show that the mark which allegedly has been infringed is a legally protectible trademark. See Pirone, 894 F.2d at 582; Estate of Presley v. Russen, 513 F. Supp. 1339, 1361-62 (D.N.J. 1981) and cases cited therein. The test for protectibility under the common law is essentially the same as the test under Federal law. Pirone, 894 F.2d at 582. Therefore, Defendants' name "Snakelight" is not protectible under common law, and there is no basis to assert a claim for common law trademark infringement. Summary judgment is granted in favor of Black & Decker as to Count I of Defendants' Counterclaim.
For the same reason, Black & Decker is entitled to summary judgment on Count II of its Complaint, namely, that it did not act willfully or in bad faith adopt or infringe any trademark rights of Defendants. Because Defendants do not have a protectible mark, Black & Decker could not have infringed it.
Black & Decker is also granted summary judgment on Count III of its Complaint, which seeks a declaration that Defendants have no right to injunctive relief. Because of the determination that Dunsford and M.D. do not have a protectible mark in the name "Snakelight," Defendants have no basis for seeking an injunction.
Finally, Defendants assert in Count IV of their Counterclaim that Black & Decker improperly obtained the registration of its trademark through false statements made to the Patent and Trademark Office. However, in light of the pleadings and affidavits submitted by Black & Decker in support of its motion for summary judgment, Defendants are required to "come forward with 'specific facts showing that there is a genuine issue for trial.'" Matsushita, 475 U.S. at 587 (quoting Fed. R. Civ. P. 56(e)). The Defendants may not "rest on [their] allegations to get to a jury without 'any significant probative evidence tending to support the complaint." Anderson, 477 U.S. at 249 (quoting First National Bank of Arizona v. Cities Service Co., 391 U.S. 253, 290, 20 L. Ed. 2d 569, 88 S. Ct. 1575 (1968). Other than a short mention in the Counterclaim itself, there is nothing in the pleadings, depositions or affidavits which point to a genuine triable issue as to any material fact on the issue of false registration. Addressing this issue at trial would be pointless. Summary judgment is therefore granted in favor of Black & Decker as to Count IV of Defendants' Counterclaim.
Summary judgment is granted in favor of Plaintiff Black & Decker on Counts I, II and III of its Complaint, and Counts I, III and IV of Defendants' Counterclaim.
Shira A. Scheindlin
Dated: New York, New York
August 6, 1996