B & J Enterprises Ltd., which has used, but never registered, the mark Washington Talent Agency since 1967, failed to convince the Fourth Circuit to overturn a summary judgment in favor of Ken Giordano and his business, Albrecht Entertainment Services Incorporated, which registered the domain name www.washingtontalentagency.com as a portal to the USA Talent Agency Web site. The Fourth Circuit refused to overturn the lower court’s ruling on B & J’s trademark infringement and cybersquatting claims, holding that the mark was a descriptive term and that B & J did not provide sufficient evidence of secondary meaning. B & J Enter. v. Giordano, No. 08-1375 (4th Cir. May 18, 2009). The court found that only two of the six factors in the applicable secondary meaning test were present — substantial advertising expenditures and length of use. As “no single factor is determinative,” and B & J was unable to show that a “substantial number of present or prospective customers” would associate the mark with its business, these two elements were insufficient to show the mark acquired secondary meaning and could overcome its inherently descriptive nature. Id. at 23. After over 40 years in business in the D.C. area, the agency may have acquired talent, but it hasn't acquired a protectable mark.
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Fourth Circuit finds it takes more than talent to protect a mark
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