Plaintiff Custom Vehicles ("Custom") sells a type of van under the name "Work-N-Play" that can be converted from a mobile office to a camper, and vice versa. Custom sued defendant Forest River for trademark infringement and, having lost on summary judgment, appealed the decision to the Court of Appeals for the Seventh Circuit.
Custom (actually, the original applicant was J.T. Custom Works, Inc., who assigned the mark to Custom) filed an intent-to-use trademark application in 2000 for WORK-N-PLAY for use with "vehicle conversion services." The mark proceeded through examination, and was finally registered in September 2002. While Custom claimed a first use date of September 2000, the Court notes that such sale did not occur under the mark WORK-N-PLAY. In fact, the record apparently shows that Custom did not actually make bona fide sales until 2004, when it sold six vans (as proof of use in commerce, Custom apparently submitted a flyer advertising the vehicle conversion services, but I was unable to pull up this document via the USPTO's electronic docket retrieval system).
In 2002, Defendant, which was a much larger company than Custom, started selling a van with a ramp door at the back and space inside for a repair shop so that one could transport and repair a motorcycle or snowmobile without the need to take it to a repair shop. Defendant called this product "Work and Play," and by 2004 its annual sales had exceeded $10 million. Both Custom and defendant promoted their respective products at recreational-vehicle trade shows (in other words, the channels of trade were similar and this could potentially lead to consumer confusion).
In its discussion, the Court maintained that Custom's mark WORK-N-PLAY is a descriptive mark in that it describes a characteristic of the goods or services in question (i.e. the van's owner could "work out of it through the week" and "play out of it on the weekends"). The Court pointed out that trademark owners are generally not permitted to appropriate a descriptive mark because this would impair competition (Note: although it is true that merely descriptive marks cannot be registered on the Principal Register without a showing of acquired distinctiveness or secondary meaning, such marks may, nonetheless, be registrable on the Supplemental Register as long as they are already in use and are capable of distinguishing the applicant's goods or services, i.e. they are not generic designations). So until and unless Custom's mark WORK-N-PLAY achieved secondary meaning - by becoming uniquely associated with the plaintiff as identifying the source of the vehicle conversion services, and not solely as a descriptive designation for them - the Court stated that it could not be legally protected as a trademark. Since, due to insufficient sales, Custom could not demonstrate secondary meaning for the descriptive mark, the Court held that no basis existed for presuming that consumers would be confused into thinking that defendant's "Work and Play" van had been produced by Custom. The Court, therefore, affirmed the lower court's summary judgment ruling in favor of defendant, Forest River, Inc.
Comment: It is interesting to note that Custom's WORK-N-PLAY trademark was registered on the Principal Register (see Download Work-N-Play.pdf), which has a dual significance. First, although Custom filed its application based on intent-to-use in 2000, shouldn't the application date have constituted constructive use of the mark once that application matured into a registration in 2002? If so, and since this constructive use date preceded defendant's first use of its mark, Custom's registration should have afforded it nationwide priority over defendant. The second important aspect is that registration on the Principal Register essentially serves as a presumption that the mark is inherently distinctive, and, therefore, not merely descriptive. I have not reviewed the summary judgment briefs or any other underlying court filings in this case (including the District Court's summary judgment ruling), but I would be interested to know what others think about this. Perhaps there is a simple and legitimate answer to my musings. Any comments would be appreciated.
Custom Vehicles, Inc. v. Forest River, Inc., 2007 WL 401571 (7th Cir., Feb. 7, 2007).