B & J Enterprises, LTD v. Giordano , 329 F. App'x 411 ( 2009 )

UNPUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
No. 08-1375
B & J ENTERPRISES, LTD, trading as Washington Talent
Agency,
Plaintiff – Appellant,
v.
KEN GIORDANO; ALBRECHT ENTERTAINMENT SERVICES,
INCORPORATED,
Defendants – Appellees.
Appeal from the United States District Court for the District of
Maryland, at Greenbelt. Marvin J. Garbis, Senior District
Judge. (8:06-cv-01235-MJG)
Argued: March 24, 2009 Decided: May 18, 2009
Before MICHAEL, MOTZ, and KING, Circuit Judges.
Affirmed by unpublished per curiam opinion.
ARGUED: Louis Fireison, LOUIS FIREISON & ASSOCIATES, PA,
Bethesda, Maryland, for Appellant. William D. Day, GILL, SIPPEL
& GALLAGHER, Rockville, Maryland, for Appellees. ON BRIEF:
Vincent T. Lyon, Patricia H. Ley, LOUIS FIREISON & ASSOCIATES,
PA, Bethesda, Maryland, for Appellant.
Unpublished opinions are not binding precedent in this circuit.
PER CURIAM:
Plaintiff B & J Enterprises, Ltd, appeals from a summary
judgment award in favor of defendants Ken Giordano and Albrecht
Entertainment Services, Incorporated, with respect to B & J’s
trademark infringement and cybersquatting claims. In its
appeal, B & J contends that the district court erred in two
respects: (1) by striking various letters and affidavits
submitted by B & J on the summary judgment issue; and (2) by
awarding summary judgment to the defendants and denying B & J’s
cross-motion for such relief. As explained below, we agree with
the district court and affirm.
I.
B & J operates a business that provides entertainment
talent for events in the greater Washington, D.C. area (the
relevant geographic area), using the name “Washington Talent
Agency.” Although B & J had used this name since 1967, it did
not seek registration of the “Washington Talent Agency” mark
until July 2006, after the initiation of this lawsuit. 1 In
1
In July 2006, B & J filed an application to register
“Washington Talent Agency” with the Patent and Trademark Office
(the “PTO”). The PTO subsequently published the mark for
opposition, and the defendants opposed B & J’s application,
which remained pending during the district court proceedings.
In this opinion, we use the terms “mark,” “service mark,” and
“trademark” somewhat interchangeably, referring to a mark that
(Continued)
2
January 2005, Albrecht, doing business as “USA Talent Agency,”
and Giordano, Albrecht’s owner and chief executive officer,
registered four separate domain names:
“WashingtonTalentAgency.com,” “MarylandTalentAgency.com,”
“VirginiaTalentAgency.com,” and “ColoradoTalentAgency.com.” 2
Each of these domain names is associated with a specific
internet website, and each of the websites is a portal for
Albrecht’s parent website, “USATalentAgency.com.” 3 Sometime
after June 2005, B & J contacted the defendants, explained that
B & J had been using the name “Washington Talent Agency” for
almost forty years, informed the defendants that they were
infringing on such use, and requested that such infringement
activities cease. B & J also unsuccessfully sought to buy the
is federally registered or otherwise protected under federal
law.
2
A domain name is “any alphanumeric designation which is
registered with or assigned by any domain name registrar, domain
name registry, or other domain name registration authority as
part of an electronic address on the Internet.” 15 U.S.C.
§ 1127.
3
When a consumer accesses the website of
“WashingtonTalentAgency.com,” limited information regarding the
services offered by Albrecht in the greater Washington, D.C.
area is made available. The website instructs such a consumer
to “Click Here to Enter!” and provides a hyperlink to Albrecht’s
“USATalentAgency.com” website, which contains more extensive
information concerning Albrecht’s services.
3
domain name “WashingtonTalentAgency.com” from the defendants.
When B & J’s proposals were rejected, this lawsuit followed.
On May 15, 2006, B & J filed its complaint for injunctive
and other relief in the District of Maryland, alleging two
claims against the defendants: trademark infringement, under
§ 43 of the Lanham Act, 15 U.S.C. § 1125(a) (the “trademark
claim”); and cybersquatting, pursuant to the Anticybersquatting
Consumer Protection Act, 15 U.S.C. § 1125(d) (the
“cybersquatting claim”). Pertinent to both claims, B & J
alleges that it has a valid and protectable trademark in the
name “Washington Talent Agency,” and that the defendants’ use of
the domain name “WashingtonTalentAgency.com” is likely to cause
confusion among consumers. On the cybersquatting claim, B & J
also alleges that the defendants acted in bad faith in securing
the “WashingtonTalentAgency.com” domain name.
On June 6, 2007, following more than six months of
discovery proceedings, the parties filed cross-motions for
summary judgment. In their submission, the defendants
maintained that they were entitled to summary judgment, under
Rule 56 of the Federal Rules of Civil Procedure, on both the
trademark claim and the cybersquatting claim. They asserted
that “Washington Talent Agency” was not entitled to trademark
protection, because it was either a generic term or a
descriptive term that had not acquired secondary meaning. On
4
the cybersquatting claim, the defendants asserted that B & J had
failed to show either secondary meaning or bad faith. B & J, on
the other hand, sought summary judgment on its own behalf,
maintaining that there was no genuine issue of material fact and
that it was entitled to prevail on its claims as a matter of
law.
On August 22, 2007, the district court heard argument on
the cross-motions for summary judgment. At the hearing’s
conclusion, as reflected in its Order, the court stated that it
would award summary judgment to the defendants and deny B & J’s
cross-request for such relief. See B & J Enters., Ltd v.
Giordano, No. 8:06-cv-01235 (D. Md. Aug. 22, 2007) (the “Summary
Judgment Order”). 4 The court deferred entering a final judgment,
however, authorizing B & J to seek reconsideration of the
Summary Judgment Order. Such reconsideration was subject to
multiple conditions: that B & J request reconsideration by
October 22, 2007; that B & J pay part of the defendants’ legal
fees; and that B & J “submit evidence adequate to establish the
existence of a genuine issue of material fact preventing summary
judgment for Defendants.” Id. at 1.
4
The Summary Judgment Order is found at J.A. 242-43.
(Citations herein to “J.A. __” refer to the contents of the
Joint Appendix filed by the parties in this appeal.)
5
On October 17, 2007, B & J moved for reconsideration of the
Summary Judgment Order. In support thereof, it submitted seven
letters, containing statements and opinions concerning B & J and
its business reputation in the greater Washington, D.C. area
(the “Letters”). In response, the defendants moved to strike
the Letters because they were unsworn and unauthenticated, and
thus could not be considered on the summary judgment issue.
On December 6, 2007, the district court granted the
defendants’ motion to strike, directing that the Letters “shall
not be part of the record in regard to Plaintiff’s pending
Motion for Reconsideration.” B & J Enters., Ltd v. Giordano,
No. 8:06-cv-01235, slip op. at 3 (D. Md. Dec. 6, 2007). In so
ruling, the court reflected frustration with B & J and its
counsel, observing that it was “unfortunate” that, “in view of
the history of this case in which Plaintiff’s counsel have been
given one final chance to present evidence to avoid summary
judgment, they would not have taken the minimal step of having
the authors of the letters add thereto an endorsement signed
under penalties of perjury.” Id. at 2. Although the court
recognized that “it is highly unlikely that the resolution of
the instant motion will turn upon the presence or absence” of
the Letters, it declined to consider them for summary judgment
purposes. Id. at 2-3.
6
On December 20, 2007, two months after the reconsideration
deadline had expired, B & J supplemented its reconsideration
request, filing six affidavits attesting to the authenticity of
the Letters (the “Affidavits”). On March 11, 2008, the district
court filed an opinion denying reconsideration, striking the
Affidavits, and explaining its views on the summary judgment
issue. See B & J Enters., Ltd v. Giordano, No. 8:06-cv-01235
(D. Md. Mar. 11, 2008) (the “Reconsideration Opinion”). 5 In
particular, the court explained that it had “excluded from the
summary judgment record certain ‘evidence’” — namely the
Affidavits filed on December 20, 2007 — because they were “not
submitted by Plaintiff’s counsel until well after the motion
filing deadline and, indeed, even after the instant motion had
been briefed.” Id. at 11. The court also stated that, even if
it had considered the Affidavits, its disposition of the summary
judgment issue would be unaffected.
In awarding summary judgment to the defendants, the
district court concluded that the name “Washington Talent
Agency” was a geographically descriptive term, and thus only
protected from use if it had acquired a secondary meaning. As
the court explained, if the name “Washington Talent Agency” had
acquired secondary meaning — thus providing B & J a protectable
5
The Reconsideration Opinion is found at J.A. 287-99.
7
trademark — “[t]here is no doubt . . . Defendants would have
infringed the trademark, would have to cease use of the domain
name ‘WashintonTalentAgency.com,’ and possibly be subject to
liability under the [cybersquatting statute].” Reconsideration
Opinion 4-5. The court emphasized, however, that “there is
insufficient evidence from which a reasonable fact finder could
find that the words ‘Washington talent agency’ had acquired a
secondary meaning so as to entitle [B & J] to a protectable
trademark for the name Washington Talent Agency.” Id. at 11.
Having decided that B & J did not possess a trademark in the
name “Washington Talent Agency,” the court rejected both of
B & J’s claims. The court thus denied the reconsideration
request, awarded summary judgment to the defendants, and denied
such relief to B & J.
On March 11, 2008, B & J filed its timely notice of appeal
in this case. We possess jurisdiction pursuant to 28 U.S.C.
§ 1291.
II.
In seeking relief on appeal, B & J maintains that the
district court erred in two respects. First, B & J asserts that
the court erred in excluding the Letters and Affidavits from
consideration on the summary judgment issue. Second, B & J
contends that, in any event, the court erred in awarding summary
8
judgment to the defendants and in failing to award summary
judgment to B & J. We assess these contentions in turn.
A.
B & J first challenges the district court’s decision to
exclude the Letters and Affidavits from the summary judgment
record. On December 6, 2007, the court struck the Letters, thus
declining to consider them in the summary judgment proceedings.
In its Reconsideration Opinion, the court also excluded the
Affidavits, explaining that they were “not submitted by
Plaintiff’s counsel until well after the motion filing deadline
and, indeed, even after the instant motion had been briefed.”
Reconsideration Opinion 11.
We review for abuse of discretion a trial court’s exclusion
of evidence from a summary judgment record. See Supermarket of
Marlinton, Inc. v. Meadow Gold Dairies, Inc., 71 F.3d 119, 126
(4th Cir. 1995). Although a district court possesses broad
discretion on whether to consider a tardy filing of summary
judgment materials, see Fed. R. Civ. P. 6, a late filing should
be authorized “only if cause or excusable neglect has been shown
by the party failing to comply with the time provisions,” Orsi
v. Kirkwood, 999 F.2d 86, 91 (4th Cir. 1993).
Put simply, the district court did not abuse its discretion
in excluding the Letters and Affidavits from the summary
judgment record. First, B & J was not entitled to have the
9
Letters considered on the summary judgment issue because they
were unsworn and unauthenticated. In order to be considered on
summary judgment, “‘documents must be authenticated by and
attached to an affidavit that meets the requirements of Rule
56(e).’” Orsi, 999 F.2d at 92 (quoting 10A Charles A. Wright et
al., Federal Practice and Procedure § 2722, at 58-60 (1983 &
Supp. 1993)). Second, the court was within its discretion in
striking the Affidavits. The Affidavits were untimely —
submitted two months after the court’s deadline, when B & J’s
reconsideration request was already ripe for disposition.
Furthermore, the Affidavits were presented without any
explanation for the delay or an assertion of excusable neglect.
In such circumstances, we must reject B & J’s contention that
the court erred in striking the Letters and Affidavits.
B.
We next assess B & J’s second contention, that the district
court erred — even in the absence of the Letters and Affidavits
— in making the summary judgment rulings. In a trademark
dispute, we review de novo a district court’s award of summary
judgment. Carefirst of Md., Inc. v. First Care, P.C., 434 F.3d
263, 267 (4th Cir. 2006). Such an award is only appropriate
when the summary judgment record shows “that there is no genuine
issue as to any material fact and that the moving party is
entitled to a judgment as a matter of law.” Fed. R. Civ. P.
10
56(c); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322
(1986). In evaluating a summary judgment issue, the evidence of
record must be viewed in the light most favorable to the
nonmoving party. See Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 255 (1986). A mere scintilla of proof, however, will not
bar a summary judgment award; the question is “not whether there
is literally no evidence, but whether there is any upon which a
jury could properly proceed to find a verdict for the party
producing it.” Id. at 251 (internal quotation marks omitted).
Where “the nonmoving party has failed to make a sufficient
showing on an essential element of [its] case, with respect to
which [it] has the burden of proof,” the moving party is
entitled to summary judgment. Celotex Corp., 477 U.S. at 323. 6
1.
In this proceeding, B & J seeks relief on two claims
against the defendants: the trademark claim and the
cybersquatting claim. Section 43(a) of the Lanham Act protects
an unregistered mark from trademark infringement. See 15 U.S.C.
§ 1125(a) (creating action in favor of person damaged, or likely
6
Cross-motions for summary judgment are reviewed under the
same standard, and we therefore consider “each motion separately
on its own merits to determine whether either of the parties
deserves judgment as a matter of law.” Rossignol v. Voorhaar,
316 F.3d 516, 523 (4th Cir. 2003) (internal quotation marks
omitted).
11
to be damaged, by the use in commerce of “any word, term, name,
symbol, or device, or any combination thereof” which “is likely
to cause confusion”). 7 In order to maintain a cause of action
for trademark infringement, a plaintiff must show (1) that “it
has a valid, protectible trademark”; and (2) “that the
defendant’s use of a colorable imitation of the trademark is
likely to cause confusion among consumers.” Lone Star
Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922,
930 (4th Cir. 1995); see also 15 U.S.C. § 1125(a).
Additionally, to establish a prima facie case of cybersquatting,
a plaintiff must prove (1) that it possesses a valid,
protectable trademark; (2) that the defendant registered,
trafficked in, or used a domain name that is “identical or
confusingly similar” to the plaintiff’s trademark; and (3) that
the defendant acted “with the bad faith intent to profit from
the good will associated with the trademark.” Retail Servs.
Inc. v. Freebies Publ’g, 364 F.3d 535, 549 (4th Cir. 2004)
(internal quotation marks omitted).
Thus, in order to prevail on either a trademark or
cybersquatting claim, a plaintiff must “first and most
7
In contrast to an unregistered mark, a federally
registered trademark is protected from infringement under § 32
of the Lanham Act. See 15 U.S.C. § 1114(1). However, only a
mark characterized as “distinctive” may be federally registered
as a trademark. See id. § 1052(f).
12
fundamentally prove that it has a valid and protectable mark.”
U.S. Search, LLC v. US Search.com Inc., 300 F.3d 517, 523 (4th
Cir. 2002) (internal quotation marks omitted); see also Retail
Servs. Inc., 364 F.3d at 549 (explaining that “a prerequisite
for bringing a [cybersquatting claim] is establishing the
existence of a valid trademark”). This element — a valid and
protectable mark — is therefore essential to each of B & J’s
claims. If B & J failed to make a sufficient showing on this
element, the summary judgment award in favor of the defendants
was appropriate. See Celotex Corp., 477 U.S. at 323.
Whether a mark is protected under federal law depends,
first of all, upon its classification — either as “generic,”
“descriptive,” “suggestive,” or “arbitrary/fanciful.” See U.S.
Search, LLC, 300 F.3d at 523. Accordingly, the degree of
protection accorded to a mark hinges on the extent of its
distinctiveness. See id. In this case, the Reconsideration
Opinion concluded that the name “Washington Talent Agency”
should be classified as a “descriptive mark.” And, the parties
do not contest this point on appeal. As a descriptive mark,
however, the name “Washington Talent Agency” is eligible for
legal protection only if it has been shown to have acquired a
“secondary meaning” in the eyes of the public. See id.Secondary meaning is generally accepted as “the consuming
public’s understanding that the mark, when used in context,
13
refers, not to what the descriptive word ordinarily describes,
but to the particular business that the mark is meant to
identify.” Perini Corp. v. Perini Const., Inc., 915 F.2d 121,
125 (4th Cir. 1990). Furthermore, a trademark infringement
plaintiff must show that its descriptive mark acquired such
secondary meaning (1) in the defendant’s trade area, and (2)
prior to the time the defendant entered the market. See id. at
125-26.
In our Perini decision, we identified and spelled out six
factors that are relevant to the resolution of the secondary
meaning issue. See 915 F.2d at 125. Each of these factors
should be assessed in a secondary meaning analysis: (1)
plaintiff’s advertising expenditures; (2) consumer studies
linking the mark to a source; (3) the plaintiff’s record of
sales success; (4) unsolicited media coverage of the plaintiff’s
business; (5) attempts to plagiarize the mark; and (6) the
length and exclusivity of the plaintiff’s use of the mark. See
id.; see also U.S. Search, LLC, 300 F.3d at 525. In Perini,
Judge Murnaghan explained that none of the six factors is
necessarily determinative of secondary meaning, and all of them
need not be favorable for the plaintiff to prevail. See 915
F.2d at 125-26.
A trademark plaintiff, seeking to establish secondary
meaning, faces a “rigorous evidentiary standard.” U.S. Search,
14
LLC, 300 F.3d at 525. And, although a secondary meaning issue
is generally for the trier of fact, when the plaintiff’s
evidence is sufficiently lacking, a trial court is entitled to
conclude on summary judgment that its mark lacks secondary
meaning. See id. at 525-26. In order to so rule, however, the
court must view the facts in the light most favorable to the
nonmoving party, and then reasonably conclude that a jury could
not find for the plaintiff. See id. at 522, 525-26. As we have
explained, if a plaintiff “cannot clear the [secondary meaning]
hurdle; that is, it cannot show that its mark . . . is entitled
to service mark protection,” an award of summary judgment to the
defendant is warranted. See id. at 523.
2.
In order to establish secondary meaning in the name
“Washington Talent Agency,” B & J was obliged to show that “a
substantial number of present or prospective customers,” when
hearing or reading of the “Washington Talent Agency,” would
associate the name specifically with B & J’s business. See
Perini, 915 F.2d at 125 (internal quotation marks omitted).
B & J was also obliged to show that such secondary meaning
existed in Albrecht’s trade area — the greater Washington, D.C.
area — prior to January 2005 (when Albrecht entered the market).
In evaluating the secondary meaning issue, the Reconsideration
Opinion assessed each of the six Perini factors, analyzed the
15
relevant evidence, and concluded that “[t]he bottom line is that
on the record, there is insufficient evidence from which a
reasonable fact finder could find that the words ‘Washington
talent agency’ had acquired a secondary meaning so as to entitle
Plaintiff to a protectable trademark for the name Washington
Talent Agency.” Reconsideration Opinion 11.
Of the six Perini factors, the first (plaintiff’s
advertising expenditures) and the last (the length and
exclusivity of the plaintiff’s use of the mark) appear to be
most supportive of B & J’s secondary meaning contention. We
will thus first separately evaluate those Perini factors, and
then turn to the other four. Because no single factor is
determinative, after considering each factor separately, we will
assess whether — even evaluated cumulatively — B & J’s evidence
is sufficient to satisfy the secondary meaning requirement.
a.
On the first Perini factor (plaintiff’s advertising
expenditures), the Reconsideration Opinion related that B & J
had presented the following evidence:
• “[T]ax returns for 17 years with deductions for
advertising”; 8
8
B & J presented its income tax returns for most of the
years between 1970 and 2004. Those returns reflected annual
deductions for advertising of as much as $67,000. In the five
years between 2000 and 2004, such advertising deductions were in
the sixty-thousand-dollar range.
16
• “Profit and Loss reports for 9 years with line
items for advertising expenditures”;
• “16 proofs of advertisements”; and
• “A letter from the Advertising Manager of The
Washingtonian stating that Washington Talent
Agency has run an advertisement in each issue of
the Magazine since 2000.”
Reconsideration Opinion 7. The district court deemed B & J’s
showing on advertising to be insufficient, however, explaining
that the evidence was “by no means adequate to establish
significant expenditures advertising the trademark ‘Washington
Talent Agency.’” Id.In reaching this conclusion on the advertising factor, the
district court observed that the evidence produced by B & J
showed that its advertising expenditures had been made on
“business promotions of some kind,” rather than “for advertising
that would tend to promote a secondary meaning” in the name
“Washington Talent Agency.” Reconsideration Opinion 7. The
court explained this observation further, stating that, even if
it assumed “all of these expenditures were devoted to
advertisements using the name ‘Washington Talent Agency,’” B & J
had failed to show that its advertising expenditures were
effective with consumers in the greater Washington, D.C. area,
causing them to associate “Washington Talent Agency” with B & J.
Id. at 8. Notably, the court concluded that, although B & J had
17
presented some advertising proofs as evidence — alleging that
such advertising had appeared in various print media over the
years — it failed to show the locations and dates of any
publications, and had otherwise failed to present any actual
advertisements. Id. 9
We must recognize, in the context of this issue, that B & J
made substantial expenditures of advertising funds over a period
of several years. Nevertheless, we also agree with the district
court that large advertising or promotional expenditures, while
relevant to the issue of secondary meaning, are not dispositive.
See Am. Footwear Corp. v. Gen. Footwear Co., 609 F.2d 655, 663
(2d Cir. 1979); see also E.T. Browne Drug Co. v. Cococare
Prods., Inc., 538 F.3d 185, 199 (3d Cir. 2008) (describing first
factor as “extent of . . . advertising leading to buyer
association”). Absent a showing that such expenditures “were
effective in causing the relevant group of consumers to
associate the mark with itself,” secondary meaning cannot be
established. FM 103.1, Inc. v. Universal Broad. of N.Y., Inc.,
9
B & J introduced evidence of only one published
advertisement. It was a four-line, text-only classified
advertisement (approximately three inches wide and an inch high)
in The Washingtonian magazine that had appeared on a monthly
basis for about five years. The district court concluded that
this advertisement, viewed in the context of the surrounding
ads, had only used the name “Washington Talent Agency” in a
generic — rather than distinct — form.
18
929 F. Supp. 187, 196 (D.N.J. 1996); see also Dick’s Sporting
Goods, Inc. v. Dick’s Clothing & Sporting Goods, Inc., No. 98-
1653, 1999 WL 639165, at *7 (4th Cir. Aug. 20, 1999)
(unpublished) (citing FM 103.1, Inc., 929 F. Supp. 187). On
this record, B & J failed to present the context of its
advertising expenditures, and, absent such a showing, a jury
would make a leap of faith to conclude that the name “Washington
Talent Agency” had gained secondary meaning in the relevant
geographical area.
Notably, B & J’s advertising evidence, viewed in the proper
light, shows only that its advertising funds were expended
generally; they are not shown as advertising the name
“Washington Talent Agency” in the relevant area. There was no
evidence of the quality, type, location, or duration of such
advertising. Put simply, B & J should have shown that the
advertising occurred in the greater Washington D.C. area — a
connection essential to satisfying the first Perini factor. See
Perini, 915 F.2d at 126 (concluding court erred by failing “to
connect the plaintiff’s nationwide statistics to the defendant’s
trade area”). 10 Thus, although advertising is potentially
10
Notably, the advertisement proofs fail to remedy the
evidentiary deficiency on the first Perini factor. With no
showing of location, duration, and frequency of advertisements,
we are unable to conclude that customers in the greater
(Continued)
19
B & J’s best showing on a Perini factor, we are unable to
conclude that B & J has satisfied it.
b.
With respect to B & J’s other potentially strong Perini
factor — the sixth (the length and exclusivity of the
plaintiff’s use of the mark) — the name “Washington Talent
Agency” had been used in B & J’s business for almost forty
years. The district court nevertheless concluded that such a
period of use was alone insufficient to warrant a ruling in
favor of B & J, because it had failed to show the exclusivity of
such use in the relevant market. See Reconsideration Opinion
10-11. We agree — evidence of length of use, absent a showing
of exclusivity, is inadequate to satisfy the sixth Perini
factor. See U.S. Search, LCC, 300 F.3d at 526 n.12 (“Even
assuming [plaintiff] has used ‘U.S. Search’ continuously since
1982 . . . length of time alone is insufficient to establish
secondary meaning.”); see also 815 Tonawanda Street Corp. v.
Fay’s Drug Co., 842 F.2d 643, 648 (2d Cir. 1988) (concluding no
secondary meaning despite evidence of “long and exclusive use”
of mark).
Washington, D.C. area would associate the name “Washington
Talent Agency” with B & J.
20
c.
With respect to the other four Perini factors, the
Reconsideration Opinion examined each of them and concluded that
B & J’s evidence was inadequate. Under our precedent, a
particular factor is not satisfied when some evidence is
produced, if that evidence is minimal or limited. See U.S.
Search, LLC, 300 F.3d at 526 (concluding Perini factors one and
three were not satisfied despite evidence of minimal advertising
expenditures and limited sales success); see also Laureyssens v.
Idea Group, Inc., 964 F.2d 131, 136 (2d Cir. 1992) (concluding
no secondary meaning in light of weak sales, low advertising
expenditures and promotions, minimal unsolicited media coverage,
and brief period of exclusive use).
Importantly, with respect to the second Perini factor
(consumer studies linking the mark to a source), there was a
notable absence of any such studies linking the name “Washington
Talent Agency” to B & J. The absence of those studies is
striking, because such evidence is “generally thought to be the
most direct and persuasive way of establishing secondary
meaning.” U.S. Search, LLC, 300 F.3d at 526 n.13. As a result,
B & J failed on the second Perini factor.
We agree with the Reconsideration Opinion that the third
Perini factor (the plaintiff’s record of sales success) was not
satisfied because the supporting evidence was incomplete.
21
Although B & J presented some evidence concerning its sales
history, it did not show sales success, if any, in the greater
Washington, D.C. area. See Dick’s Sporting Goods, Inc., 1999 WL
639165, at *7 (comparing plaintiff’s gross sales to market’s
total sales volume).
In disposing of the fourth Perini factor (unsolicited media
coverage of the plaintiff’s business), the Reconsideration
Opinion characterized it as “[q]uite telling[]” that, after
almost forty years, B & J had forecast evidence of only one
instance of unsolicited media coverage, a reference in an
article in a high school newspaper. Reconsideration Opinion 9-
10. Such media exposure was thus “an ‘isolated incident’ from
which no reasonable jury could find ‘widespread recognition in
the minds of the consuming public, as alleged.’” Id. at 10(quoting Dick’s Sporting Goods, Inc., 1999 WL 639165, at *8).
Finally, on the fifth Perini factor (attempts to plagiarize the
mark), B & J’s President acknowledged that he was unaware of any
infringement or plagiarism prior to the defendants’ activities.
See id. We also agree with these assessments.
d.
In making a cumulative de novo assessment of the Perini
factors — again in the light most favorable to B & J — the
evidence shows that B & J used the name “Washington Talent
Agency” in the greater Washington, D.C. area for almost forty
22
years, and that it expended substantial money on advertising.
Although such evidence is relevant to establishing secondary
meaning, it is insufficient to satisfy B & J’s burden in this
case. According every favorable inference to B & J on the
Perini factors, it has nevertheless failed on the crucial
question: whether “a substantial number of present or
prospective customers,” when hearing or reading of the
“Washington Talent Agency,” would associate the name
specifically with B & J’s business. Perini, 915 F.2d at 125(internal quotation marks omitted); see also Anderson, 477 U.S.
at 251 (requiring more than a scintilla of proof to preclude
award of summary judgment); U.S. Search, LCC, 300 F.3d at 526(explaining that despite evidence of advertising expenditures
and sales success, summary judgment was appropriate). 11 Because
B & J failed to establish secondary meaning — an essential
element on which it has the burden of proof — the court properly
awarded summary judgment to the defendants on each of B & J’s
11
B & J’s final contention, that the district court should
have accorded evidentiary weight to the PTO’s publication of the
“Washington Talent Agency” mark for opposition, see supra note
1, is also without merit. Although the PTO’s issuance of a
certificate of registration might provide a registrant with,
inter alia, prima facie evidence of the validity of a mark, see
U.S. Search, LCC, 300 F.3d at 524, B & J has provided no support
for the legal proposition that a PTO publication is entitled to
similar weight.
23
claims, and also properly denied B & J’s summary judgment
request.
III.
Pursuant to the foregoing, we affirm the judgment of the
district court.
AFFIRMED
24