The U.S. Court of Appeals for the Fourth Circuit affirmed the grant of summary judgment against the plaintiff’s trademark infringement and cybersquatting claims, in a case in which the plaintiff wanted 40 years to register its geographically descriptive mark and could not establish secondary meaning. B & J Enterprises, Ltd. v. Ken Giordano et al., 2009 U.S. App. LEXIS 10564 (4th Cir., May 18, 2009) (Michael, J.; Motz, J.; King, J.) (affirmed by unpublished per curiam opinion).
The plaintiff had operated a talent agency under the name “Washington Talent Agency” in the Washington, D.C. area since 1967, but did not apply to register the “Washington Talent Agency” mark until July 2006, after the commencement of the lawsuit. The defendant, doing business as “USA Talent Agency,” had registered four domain names: “WashingtonTalentAgency.com,” “MarylandTalentAgency.com,” “VirginiaTalentAgency.com” and “ColoradoTalentAgency.com.” Each of the domain names was a portal for the defendant’s parent website “USATalentAgency.com.” The plaintiff appealed. In order to prevail on trademark infringement and cybersquatting claims, a party first must prove that it possesses a valid and protectable trademark. In the instant case, the district court found that “Washington Talent Agency” was a geographically descriptive term, which had not acquired secondary meaning, and, therefore, was not a protectable mark. In reviewing the district court’s decision, the Fourth Circuit applied the six Perini factors: the plaintiff’s advertising expenditures, consumer studies linking the mark to a source, the plaintiff’s record of sales success, unsolicited media coverage of the plaintiff’s business, attempts to plagiarize the mark and the length and exclusivity of the plaintiff’s use of the mark.
In considering the first factor, the court found that B & J’s evidence of advertising expenditures was insufficient because it only showed that the funds were expended generally. They did not show expenditures on advertising the name “Washington Talent Agency” in the relevant area of Washington, D.C. B & J also failed to satisfy the second factor because it did not produce any consumer studies linking the mark to a source. With regard to the third factor, the court again found B & J’s evidence lacking because its sales history failed to show sales success in the Washington area. B & J fared no better on the fourth and fifth factors. Despite using the name “Washington Talent Agency” for almost 40 years, B & J could only produce one instance of unsolicited media coverage and no instances of infringement prior to the instant case. Finally, in evaluating the sixth factor, the court found that length of use alone, without evidence of exclusivity in the relevant market, is not sufficient to establish secondary meaning.