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Volume X, Number 187

July 03, 2020

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Double Meaning Can Make Mark Distinctive

The US Court of Appeals for the Eleventh Circuit reversed a district court’s grant of summary judgment invalidating a service mark for lacking distinctiveness, finding that a reasonable jury could understand the mark to entail a double meaning and therefore making it sufficiently distinctive to receive trademark protection. Engineered Tax Servs., Inc. v. Scarpello Consulting, Inc., Case No. 18-13690 (11th Cir. May 14, 2020) (Newsom, J.).

Engineered Tax Services (ETS) and Scarpello Consulting each provide specialized tax services performed by engineers. The United States Patent and Trademark Office (PTO) registered a mark for ETS, Engineered Tax Services, without requiring ETS to present evidence of “secondary meaning,” which would have been required for a registration based on “acquired distinctiveness.”

ETS sued Scarpello for trademark infringement under the Lanham Act after discovering Scarpello was using the Engineered Tax Services mark in an internet advertisement. Scarpello argued that the mark was invalid because it lacked the requisite distinctiveness. On summary judgment, the district court agreed and held that no reasonable jury could find ETS’s mark distinctive, either inherently or based on acquired distinctiveness. The district court determined that the mark was “descriptive” because it simply described ETS’s tax services performed by engineers and also had not acquired distinctiveness over time. ETS appealed.

The Eleventh Circuit reversed, finding that a jury could reasonably find the mark inherently distinctive. In doing so, the Court noted that registration “entitles a mark’s holder to a presumption of either inherent or acquired distinctiveness, depending on the ground on which registration was obtained.” Since ETS wasn’t required by the PTO to provide evidence of any acquired secondary meaning, the Court explained that the mark was presumed to be inherently distinctive and thus at least suggestive.

The Eleventh Circuit further explained that the district court’s analysis focused too narrowly on the individual meaning of the word “engineer,” to the exclusion of the mark as a whole, and considered only one meaning of the word to the exclusion of other relevant meanings. Here, viewing the mark holistically with the full range of a word’s ordinary meaning considered, the Court found that a reasonable jury could understand “Engineered Tax Services” to entail a double meaning and refer to tax services performed skillfully and scientifically and also by engineers. The Court found this sufficiently imaginative to render the mark “suggestive.”

The Eleventh Circuit also determined that evidence of two instances of third-party use of limited descriptive use of the mark did not suggest a lack of distinctiveness because ETS’s competitors did not need to use the mark to describe their own services. As the Court noted, there was no evidence of even “a single example in which the entire phrase ‘engineered tax services’ is used unambiguously to refer to a product or service in ETS’s main line of business.”

The Eleventh Circuit accordingly reversed the grant of summary judgment and remanded for further proceedings.

 

© 2020 McDermott Will & EmeryNational Law Review, Volume X, Number 149

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About this Author

Associate

Hala Mourad* focuses her practice on intellectual property litigation matters in federal district court and the US International Trade Commission. She works with clients to litigate patent cases spanning various technologies including consumer electronics, telecommunications, medical and surgical devices, materials engineering, and biotechnology. She has experience in all phases of litigation from pre-litigation investigations through trial and appeal.

Hala is also a registered patent attorney and has experience in contentious patent proceedings before the Patent Trial and Appeal...

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