No Secondary Meaning Grounds Any Rights in Slogan

On December 8, 2012, in Trademarks, by Brian A. Hall

UnIP (UnIntellectual Property): Service Mark for “Chicago’s Premier Flight Training Provider”

This case is out of the Northern District of Illinois.  Plaintiff filed an objection to the magistrate judge’s Report and Recommendation recommending that Plaintiff’s motion for a preliminary injunction be denied and the temporary restraining order be dissolved.  The District Court agreed with the magistrate judge in full and denied Plaintiff’s motion for a preliminary injunction.  In doing so, it found that Plaintiff, who operates a flight school that provides training to both novice and experienced pilots as well as a flying club using the slogan “Chicago’s Premier Flight Training Provider,” did not establish a likelihood of success on the merits.  The lawsuit stemmed from an employee of Plaintiff starting its own competing business and using the name “Chicago Premier Flight Training,” allegedly in violation of both the Lanham Act and Illinois Uniform Deceptive Trade Practices Act.
The issue was whether Plaintiff had established secondary meaning in its descriptive mark, “Chicago’s Premier Flight Training Provider.”  The Court recognized that secondary meaning is achieved when “the name … come[s] to be uniquely associated with the original seller, and … the term can be appropriated as a trademark because it has come to denote a single brand, not the entire product, so that its use by other sellers of the product would confuse consumers about the source of what they were buying. “  The Court further recognized that secondary meaning “can be established through direct consumer testimony, consumer surveys, length and manner of use, amount and manner of advertising, volume of sales, place in the market and proof of intentional copying.”
In light of the fact that Plaintiff had only used the mark since 2010 and only evidence came from testimony that a customer that noted the use of the mark on Plaintiff’s website, the Court held that the Plaintiff failed to establish secondary meaning.  Put simply, there was insufficient evidence presented to warrant reconsideration of the magistrate judge’s denial of Plaintiff’s request for injunctive relief.
This ruling appears well-reasoned.  That said, Plaintiff is not out of luck if it is able to gather additional evidence to establish secondary meaning, through discovery en route to a trial on the merits.  However, I question whether Plaintiff can establish its burden of proof on a term that appears very descriptive, especially given the limited time since first use.  Yet again, this case, involving an ex-employee, and I question whether ill-will between the two drove what seems to be a difficult to establish trademark claim.  For now, Plaintiff is in a holding pattern, still hopeful its claims take off, but ultimately at risk of being grounded.

Chicagoland Aviation, LLC v. Todd, 2012 WL 5949358 (N.D. Ill. Nov. 27, 2012).


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