Trademark Infringement: Volume 2

THIS CASEBOOK contains a selection of U. S. Court of Appeals decisions that analyze and discuss issues surrounding trademark infringement claims. Volume 2 of the casebook covers the Sixth through the Eleventh Circuit Court of Appeals.

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Distinctiveness is the key to trademark protectability. Only distinctive marks-"marks that serve the purpose of identifying the source of ... goods or services" -are entitled to trademark protection under the Lanham Act. Welding Servs., Inc., 509 F.3d at 1357. Marks can be inherently distinctive (marks that themselves identify the source of a particular product or service), or marks can acquire distinctiveness (marks that initially might have described a broad class of products, but that over time developed "secondary meaning ... that links [the mark] to a particular source"). Royal Palm Props., 950 F.3d at 782-83. When a mark is inherently distinctive, no proof of secondary meaning is required to prove protectability. Id. But for marks that are not inherently distinctive, proof of secondary meaning is required to obtain protection. Id.

"To separate the 'distinct' from the non-'distinct' ... we have classified marks into four categories, in descending order of strength: (1) 'fanciful' or 'arbitrary, ' (2) 'suggestive, ' (3) 'descriptive, ' and (4) 'generic.'" Id. at 783 (quoting Coach House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551, 1559 (11th Cir. 1991)). We consider fanciful, arbitrary, and suggestive marks to be inherently distinctive. Id. Descriptive and generic marks, however, are not inherently distinctive. Id. "Descriptive marks can become protectible only if they 'acquire' distinctiveness by obtaining a 'secondary meaning, ' and generic marks can never become protectible." Id. (quoting Knights Armament Co. v. Optical Sys. Tech., Inc., 654 F.3d 1179, 1188 (11th Cir. 2011)).

Pinnacle Advertising v. Pinnacle Advertising, 7 F. 4th 989 (11th Cir. 2021)