Although a trademark had been registered with the U.S. Patent and Trademark Office, the United States Court of Appeals for the Seventh Circuit affirmed a district courts award of summary judgment for the accused infringer because the trademark was descriptive and had not yet achieved secondary meaning. Custom Vehicles, Inc. v. Forest River, Inc., 2007 U.S. App. LEXIS 2610 (7th Cir., Feb. 7, 2007) (Posner, J.).

Custom Vehicles created a van that it called “Work-N-Play.” The interior of the van could be converted from a mobile office to a camper so that the owner could “work out of it through the week” and be “playing out of it on the weekends.” In 2000, Custom Vehicles registered “Work-N-Play” with the U.S. Patent and Trademark Office as an “intent to use” trademark, meaning that it would have to be used in commerce within six months.

The following year, Forest River, a much larger company, built a towed van with a ramp door at the back and space inside for a repair shop so the van’s owner could both transport a motorcycle or snowmobile and repair it without taking it to a repair shop. Forest River called its product “Work and Play” and began selling the vans in 2002. By 2004, Forest River’s sales of the “Work and Play” van exceed $10 million in sales. On the other hand, Custom Vehicles sold only one “Work-N-Play” van—a demo model—to a family member for only 2.5 percent of the van’s normal sales price. Both Custom Vehicles and Forest River promoted their respective products at recreational-vehicle trade shows. Custom Vehicles sued Forest River for trademark infringement. The district court granted summary for Forest River and Custom Vehicles appealed.

On appeal, the Seventh Circuit noted that “Work-N-Play” was a descriptive mark because it describes a characteristic of the vans. Therefore, in order for “Work-N-Play” to be a legally protected trademark, it must achieve “secondary meaning.” Custom Vehicles argued that a registered trademark carries a presumption of validity and secondary meaning and is therefore enforceable against sellers that use the term or a confusingly similar variant. The court rejected Custom Vehicles’ argument and noted that the act of registration merely begins the process that leads to the presumption. The court pointed out that a registrant could not bank or warehouse trademarks unrelated to any product or service in hopes of extracting a license fee from sellers of products or services for which one of the trademarks might be apt. Instead, a registrant must certify that trademark is used in commerce within six months of filing the trademark application. Within the six months following the trademark registration, Custom Vehicles had sold only one van, and the trademark was not used in the sale. However, even if the trademark had been used in the sale, that would not have been sufficient to place the trademark in the ordinary course of trade because the sale was too obscure to alert a significant number of consumers that “Work-N-Play” had a definite referent. The Court held that the Work-N-Play trademark had not achieved secondary meaning and there was no basis for supposing that consumers would think Forest River’s van had been produced by Custom Vehicles instead.