Primary Children’s Medical Center Foundation v. Scentsy, Inc., No. 2:11-CV-1141, 2012 WL 2357729 (D. Utah June 20, 2012)

Plaintiff Primary Children’s is a children’s medical hospital located in Utah. Each Christmas, Primary Children’s raises money through a fundraising program called the “Festival of Trees.” The festival features the sale of hundreds of decorated Christmas trees that are donated by Utah residents and private organizations. Defendant Scentsy sells candles, tins, and other fragrances worldwide. In September 2011, Scentsy began selling a product labeled “Festival of Trees.” After failing to reach a settlement, Primary Children’s filed suit alleging unfair competition under the Lanham Act.

On Primary Children’s motion for a preliminary injunction and Scentsy’s motion for summary judgment, Scentsy argued that Primary Children’s “Festival of Trees” mark was in fact generic and not protectable. The court applied the “primary significance” test and found that the primary significance of the term “Festival of Trees” to Utah residents is for a specific event that is associated with Primary Children’s. The court was particularly persuaded by evidence of broad local recognition of the event in determining that protectability was not at issue. Further, a reasonable jury could find that the mark had acquired enough secondary meaning to avoid being categorized as merely descriptive. Thus, the court denied Scentsy’s motion for summary judgment. Finally, the court denied Primary Children’s preliminary injunction, finding that the balance of harms weighed in Scentsy’s favor.