C.A. No. 11-11763-RBC, Findings of Fact and Conclusions of Law (D. Mass. Jan. 10, 2013) (Collings, M.J.) [Trademark Validity]

Plaintiff Por-Shun, Inc. (“Por-Shun”) filed a two-count complaint in this Court against Defendant Bruce Jenks d/b/a Maple Valley Creamery (“Jenks”), for trademark infringement and unfair competition in violation of the Lanham Act. On December 14, 2011, Jenks filed an answer to the complaint together with a counterclaim alleging a claim for common law trademark infringement and a claim for unfair and deceptive business practices in violation of Massachusetts General Laws Chapter 93A. In the first phase of this bifurcated action, the Court found that Por-Shun’s mark “Sugar Maple Creamery” is merely descriptive and has not acquired secondary meaning.

Por-Shun is a business located in Wilmington, Massachusetts. It has been in operation since 1983. Por-Shun sells ice cream as well as other dairy and food products. In 2009, Por-Shun introduced a new line of ice cream called Sugar Maple Creamery. Maple Valley Creamery is the name of Jenks’s ice cream business located in Hadley, Massachusetts.

The parties disagreed on where the mark “Sugar Maple Creamery” falls on the distinctiveness continuum. The Court began its analysis by explaining that a trade name is safeguarded by the Lanham Act only if the mark is “distinctive,” a term of art meaning that the mark must be arbitrary and suggestive. A suggestive terms suggests rather than describes characteristics of the goods; a descriptive term merely describes a characteristic or ingredient of the article to which it refers. If the term is merely descriptive, the term must have acquired a secondary meaning.

The Court explained that “Sugar Maple Creamery” as a term conveys an immediate idea of a dairy product made at a creamery with sugar or maple sugar or possibly maple flavoring. Accordingly, the Court found that the mark “Sugar Maple Creamery” was merely descriptive.

Having concluded that the mark “Sugar Maple Creamery” was merely descriptive, the Court then determined whether the mark had acquired a sufficient secondary meaning so as to entitle it to protection. Proof of secondary meaning entails vigorous evidentiary requirements, which Por-Shun failed to meet. The Court used the following factors in its determination: (1) length and manner of the mark’s use, (2) the nature and extent of advertising and promotion of the mark, and (3) the efforts made in promoting a conscious connection, in the public’s mind, between the name or mark and a particular product.

Por-Shun had employed the designation “Sugar Maple Creamery” on its ice cream and yogurt containers since 2009. However, Por-Shun hired no public relations professionals to promote the brand, spent no money on advertising, and created no website to promote the brand. Also, Sugar Maple Creamery products constituted only a minute portion of the approximately $200 million annual ice cream sales in Massachusetts. For these reasons, the Court found that Por-Shun failed to establish that the mark “Sugar Maple Creamery” had acquired secondary meaning.