UnIP (UnIntellectual Property): Service Mark for NORTHEAST for Trade Shows

The United States District Court for the Southern District of New York has granted summary judgment, in part, to Defendant, a non-profit organization of independent automotive collision and repair businesses who has operated a trade show, after Plaintiff failed to establish secondary meaning for, and thus trademark rights in, the mark NORTHEAST as used in connection with its trade show (Northeast Automotive Trade Show).

Relying upon Second Circuit precedent, the Court considered whether the Plaintiff could establish the requisite secondary meaning for the geographically descriptive mark by looking to the following factors:

(1) advertising expenditures
(2) consumer studies linking the mark to a source
(3) unsolicited media coverage of the product
(4) sales success
(5) attempts to plagiarize the mark, and
(6) length and exclusivity of the mark’s use.

The Court ultimately found that Plaintiff did not even create a triable issue of material fact that could withstand summary judgment and go to a jury. In doing so, the Court held that NORTHEAST as used in connection with the trade show was merely descriptive.

Again, this case confirms that consumer surveys and evidence to establish secondary meaning are critical in cases involving arguably descriptive marks. Interestingly, Defendant has its own pending trademark application with the USPTO. Whether they could establish priority and secondary meaning remains to be seen. Remember, just because Plaintiff could not does not necessarily mean that Defendant could not, especially if they have the supporting evidence (and again, priority of use).

Rockland Exposition, Inc. v. Alliance of Auto. Serv. Providers of New Jersey, 08-CV-7069 KMK, 2012 WL 4049958 (S.D.N.Y. Sept. 11, 2012).


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