3d Circuit gets descriptiveness right: it’s a matter of both the term and the goods/services

Engage
Healthcare Communications, L.L.C. v. Intellisphere, L.L.C., — Fed.Appx. —-,
2019 WL 6170825, No. 19-1017 (3d Cir. Nov. 20, 2019)
Panels
in the Second and Ninth Circuits, which really ought to know better, have
occasionally reasoned that a term is not descriptive unless you can figure out
what the goods/services are just by looking at the term.  This is nonsense, and it’s nice to have an
appellate opinion, even unpublished, saying so outright. The proper inquiry, as
the PTO has long insisted, is whether, knowing the term and the goods/services,
some leap is required to figure out their relation; when the relation is obvious,
the term is at best descriptive.
Anyhow,
this is a trademark case between “strikingly similar” companies owned by two
brothers. The court of appeals affirmed a finding of noninfringement, though on
slightly different grounds with respect to the most interesting term, PEER-SPECTIVES.
Here
are the marks at issue

With the exception of PEER-SPECTIVES, they are all descriptive without any need
for further discussion, both asserted as service marks (for advertising) and
for the underlying publications etc. The
court of appeals agreed that “advertising service marks must be sufficiently
separate from the subject of the advertising, and must be used to identify
advertising services, not merely to identify the subject of the advertising,
and “an advertising service mark that merely describes the subject of its
advertising is a descriptive mark not entitled to service mark protection.”
Indeed, the assertion of the same marks as trademarks for the underlying industry
could be regarded as an admission of descriptiveness.
There
was not enough evidence to show that the alleged marks had achieved secondary
meaning either for advertising or for the underlying goods, which were online/print
publications in the fields of hematology and oncology. Plaintiffs argued that
the district court erred in finding the marks had not achieved secondary meaning
at the time of defendants’ alleged infringement, because there was no
definitive date in the record when the alleged infringement began.  But here “the operative issue is not when
defendants infringed its marks, but whether the alleged marks had achieved
secondary meaning at all, whether it be on the date of infringement, the date
of summary judgment, or even today.” There was not sufficient evidence that
they had done so. Courts use multiple factors to establish secondary meaning.
Here, plaintiffs could offer evidence only on six of the Third Circuit’s eleven
factors: “(1) the extent of sale and advertising utilizing Engage’s trademarks;
(2) length of use of Engage’s trademarks; (3) exclusivity of use of Engage’s
trademarks; (4) copying of Engage’s trademarks by Intellisphere; (5) the number
and amount of sale involving Engage’s trademarks; and (6) the number of
consumers privy to Engage’s trademarks through the use of those marks in
commerce.”
Vitally,
there was no evidence of consumer perception. Given that void, the alleged
extensive use and alleged copying by the defendants “do not alleviate their
burden of showing how consumers identify these marks as being synonymous with
the origin of their products, nor is the circumstantial evidence presented so
overwhelming as to imply consumer association.” It has to matter that the
plaintiffs were asserting such a smorgasbord of marks—if there’d been just one,
maybe it would have been more plausible that lots of advertising had worked,
but it’s just not convincing that all those descriptive terms served as marks
for plaintiffs, and thus it’s not convincing that any given one out of the
plethora stood out. But the degree of descriptiveness also played a big role:
By way of comparison, the court believed that “at least some producer can
readily make a strong showing on the six factors plaintiffs identified, through
its sale of ‘Belgian chocolates,’ but surely that producer would not be
entitled to trademark protection for that label no matter how long or pervasive
its use of that label; consumers will never be in danger of associating that
label with the producer.”
The
court treated Peer-Spectives differently because the district court deemed it suggestive.
The court of appeals disagreed, making several important and persuasive points:
The district court had reasoned that “a ‘mental leap’ is required to tie
PEER-SPECTIVES to online and in-person continuing medical education classes for
physicians. Absent this explanation, any link between the words and the
healthcare industry would not have been immediately apparent, a clear
indication that the mark is [ ] suggestive.” 
It’s
true that the line can be difficult to draw, but fortunately the Canfield
Third Circuit case resolved the issue: “chocolate fudge” was descriptive for
soda, and that’s the same kind of term that Peer-Spectives is. “It would be
readily apparent to the average consumer that ‘Peer-Spectives’ stands for ‘Peer
Perspectives.’ Indeed, defendants’ use of the phrase ‘Peers & Perspectives’
is the very phrase plaintiffs assert infringed on their alleged mark.” This is a vitally important point about validity’s interaction with scope! Deeming too
many terms suggestive eases monopolization of terms that convey useful information
to consumers, without proof that there is a corresponding benefit to consumers
in the form of protecting them from confusion. As the court explained, “[p]eer
perspective is a concept that most consumers immediately would recognize as a
generally descriptive term that can be used to describe many products and
applicable across a multitude of industries and markets, as is the term ‘chocolate
fudge.’” “Chocolate fudge” standing alone doesn’t create an immediate association
with diet soda, but that isn’t the test. 
It takes no “mental leap” for consumers to recognize its relevance
for diet sodas, once they see it applied thereto.
A
descriptive term need not be “tied to any particular industry or market.” If we
didn’t use that rule, “ ‘very creamy ice cream’ would be found to be clearly
descriptive, but ‘very creamy,’ because its link to ice cream would not be
immediately apparent, could nevertheless be trademarked by an ice cream maker.
Of course, it is reasonable to believe that such ice cream maker would then
attempt to enforce its trademark against every other ice cream maker who uses
the term ‘very creamy ice cream’ on its products, the very term that was deemed
clearly descriptive in the first place.”
Likewise,
extensive use of a generally applicable term in other markets supported
descriptiveness. “[I]ndeed, if the ‘mental leap’ required can be made in many
markets, perhaps it is not much of a leap at all…. Unsurprisingly, a Google
search of the term ‘peerspective’ returned over 12,000 results, with a slew of
examples of its use across many industries.”
There
was no better evidence of secondary meaning here than for any other term at
issue. Thus, the district court was affirmed not because the defendants didn’t
infringe, but because there was no enforceable mark.

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