15‐782 Cross Commerce Media, Inc. v. Collective, Inc.
1 UNITED STATES COURT OF APPEALS 2 FOR THE SECOND CIRCUIT 3 August Term, 2015 4 (Argued: February 10, 2016 Decided: November 7, 2016) 5 Docket No. 15‐782
6 7 Cross Commerce Media, Inc., 8 Plaintiff—Counter‐Defendant—Appellee,
9 v.
10 Collective, Inc., 11 Defendant—Counter‐Claimant—Appellant. 12 13 14 Before: KEARSE, POOLER, and SACK, Circuit Judges.
15 Collective, Inc. and Cross Commerce Media, Inc., two companies that
16 provide data‐driven analytic software to businesses, dispute whether several of
17 Collectiveʹs trademarks are valid and, if so, have been infringed by Cross
18 Commerce Mediaʹs marks. In a series of decisions, the United States District
19 Court for the Southern District of New York (Katherine B. Forrest, Judge) granted
20 summary judgment for Cross Commerce Media and awarded it attorneyʹs fees
21 under the Lanham Act. We reverse those decisions in part, vacate them in part,
22 and remand for further proceedings. 1 REVERSED in part, VACATED in part, and REMANDED.
2 MARK G. MATUSCHAK (Vinita Ferrera 3 and Martin E. Gilmore, on the brief), Wilmer 4 Cutler Pickering Hale and Dorr, LLP, 5 Boston, MA and New York, NY, for 6 Defendant—Counter‐Claimant—Appellant. 7 JAMES M. BOLLINGER (Timothy P. 8 Heaton, Puja Patel Lea, and Lindsay 9 Mitchell Henner, on the brief), Troutman 10 Sanders LLP, New York, NY and Atlanta, 11 Georgia; J. Mark Lane and Sharon M. Sash, 12 on the brief, Lane Sash & Larrabee LLP, 13 White Plains, NY, for Plaintiff—Counter‐ 14 Defendant—Appellee.
15 SACK, Circuit Judge:
16 This appeal arises from a dispute between software companies over
17 several trademarks containing the word ʺcollective.ʺ Appellant Collective, Inc.
18 (ʺCIʺ), defendant and counter‐claimant in the district court, owns the registered
19 marks ʺCollective Network,ʺ ʺCollective Video,ʺ and ʺC Collective The Audience
20 Engine,ʺ a stylized mark in which the word ʺCollectiveʺ appears most
21 prominently (together, the ʺregistered marksʺ). CI also asserts common‐law
22 rights in the unregistered mark ʺcollective,ʺ standing alone. Appellee Cross
23 Commerce Media, Inc. (ʺCCMʺ), plaintiff and counter‐defendant in the district
1 court, operates under the name ʺCollective[i].ʺ1 CI alleges that this name (and
2 two variants) infringes its registered and unregistered marks. CCM seeks a
3 judgment to the contrary, along with a declaration that CI holds no common‐law
4 rights in the unregistered mark ʺcollectiveʺ and an order compelling the U.S.
5 Patent and Trademark Office (ʺPTOʺ) to cancel or modify CIʹs registered marks.
6 In a series of three orders, the district court (Katherine B. Forrest, Judge)
7 granted summary judgment to CCM on virtually all points in dispute and
8 awarded attorneyʹs fees under the Lanham Act. We reverse those decisions in
9 part, vacate them in part, and remand for further proceedings.
10 BACKGROUND
11 CI provides data‐driven analytic software that helps businesses select
12 effective marketing opportunities on multiple electronic platforms, including
13 ʺcomputers, smart phones, tablets and connected television.ʺ Declaration of
14 Joseph T. Apprendi, CEO and Co‐Founder of CI, dated July 10, 2014, at 4‐6
15 (Appʹx 559‐61). It was incorporated as Collective Media, Inc. in 2007, and its
16 name was changed to Collective, Inc. in 2012. From 2008 to 2011, the company
The bracketed letter ʺiʺ is part of the name. The brackets are not, as they often are in 1
other contexts, an indication of editing by the Court.
1 registered the trademarks ʺCollective Network,ʺ ʺCollective Video,ʺ and ʺC
2 Collective The Audience Engine.ʺ During the same period, CI acquired the
3 domain name www.collective.com for its principal website and referred to itself
4 in at least several instances as ʺCollective.ʺ
5 CCM provides its own brand of data‐driven analytic software. According
6 to one of the companyʹs trademark registrations, the software aids companies in
7 ʺdeploying and analyzing marketing campaigns.ʺ See CCMʹs Statement of
8 Undisputed Material Facts dated June 11, 2014, at 6 (Appʹx 588). The company
9 was founded as Cross Commerce Media, Inc. in 2007, but it began to do business
10 under the mark ʺCollective[i]ʺ (and the related marks ʺCollective Intelligenceʺ
11 and Collectivei) in 2011.
12 In late 2011, CI contacted CCM to express its concern that use of the mark
13 ʺCollective[i]ʺ in commerce would create confusion over the two companies
14 because they operate in similar fields. After negotiations failed to solve the
15 perceived problem, CI sent CCM a cease‐and‐desist letter in late 2012 asserting
16 CCMʹs infringement of CIʹs trademarks, including the registered marks and the
17 unregistered mark ʺcollective.ʺ In response, CCM filed this action in the United
18 States District Court for the Southern District of New York in an effort to
1 preempt an infringement lawsuit by CI. CCM sought three remedies: a
2 declaration that CI did not own trademark rights to the unregistered mark
3 ʺcollectiveʺ; a declaration that the name ʺCollective[i]ʺ did not infringe any of CIʹs
4 registered or unregistered marks; and an order compelling the PTO to cancel or
5 modify the registered marks. CI, in turn, filed counterclaims under the Lanham
6 Act alleging that CCMʹs use of ʺCollective[i]ʺ — along with ʺCollective
7 Intelligenceʺ and ʺCollectiveiʺ — infringed CIʹs registered marks and the
8 unregistered mark ʺcollective.ʺ2
9 The district court resolved the partiesʹ claims and counterclaims in a series
10 of three orders. First, before the parties had completed discovery, CCM moved
11 for partial summary judgment as to the inherent distinctiveness of the
12 unregistered mark ʺcollective.ʺ Trademarks, whether registered or unregistered,
13 are grouped for purposes of analysis into four categories of increasing inherent
14 distinctiveness: generic, descriptive, suggestive, and arbitrary or fanciful.
15 Bernard v. Commerce Drug Co., 964 F.2d 1338, 1340 (2d Cir. 1992). CCM sought a
16 decision by the district court that the unregistered mark ʺcollective,ʺ as used by
17 CI, is descriptive as a matter of law. CI countered that the mark is suggestive —
CI also filed a counterclaim for unfair competition under New York common law, but 2
that counterclaim was later dismissed with prejudice by stipulation of the parties.
1 or, alternatively, that a jury should decide the issue. In a March 24, 2014 order,
2 the court, agreeing with CCM, classified the mark as descriptive. Cross Commerce
3 Media, Inc. v. Collective, Inc., No. 13 Civ. 2754 (KBF), 2014 WL 1202939, at *5, 2014
4 U.S. Dist. LEXIS 38606, at *14‐15 (S.D.N.Y. Mar. 24, 2014) (the ʺMarch Orderʺ).
5 The March Order did not reject CIʹs counterclaim for infringement of the
6 unregistered mark ʺcollectiveʺ outright. By classifying the mark as descriptive,
7 however, the order imposed a heightened evidentiary standard for establishing
8 its entitlement to protection under federal trademark law. The Lanham Act
9 affords protection to a descriptive mark only if the trademark holder can
10 demonstrate that it has acquired secondary meaning in the marketplace — in
11 other words, that the markʹs ʺprimary significanceʺ to relevant consumers ʺis to
12 identify [the trademark holder as] the source of the product.ʺ Bristol‐Myers
13 Squibb Co. v. McNeil‐P.P.C., Inc., 973 F.2d 1033, 1041 (2d Cir. 1992) (internal
14 quotation marks omitted). That showing ʺentails rigorous evidentiary
15 requirements.ʺ 20th Century Wear, Inc. v. Sanmark‐Stardust, Inc., 815 F.2d 8, 10 (2d
16 Cir. 1987) (internal quotation marks omitted). Had the mark instead been
17 classified as suggestive, it would have received some degree of trademark
18 protection even ʺwithout proof of secondary meaning.ʺ McGregor‐Doniger Inc. v.
1 Drizzle Inc., 599 F.2d 1126, 1132 (2d Cir. 1979), superseded on other grounds by Fed.
2 R. Civ. P. 52(a).3
3 Seeking to build on the March Order, CCM subsequently moved for
4 summary judgment as to CIʹs counterclaim for infringement of the unregistered
5 mark ʺcollective,ʺ on two grounds. First, CCM argued that CI could not establish
6 that the mark had acquired secondary meaning — which, as noted, would mean
7 that it was not entitled to protection under the Lanham Act. Second, CCM
8 contended that even if ʺcollectiveʺ had acquired secondary meaning, CI could not
9 establish infringement because it had not used the mark in commerce (and
10 acquired corresponding trademark rights) until after CCM had introduced its
11 own marks. CI argued in response that it had raised triable issues of fact as to
12 both issues, precluding summary judgment. In an August 21, 2014 order, the
13 district court again agreed with CCM, concluding that CI had no protectable
14 rights in the unregistered mark ʺcollectiveʺ both because the mark lacked
15 secondary meaning and because CI had not used it in commerce before CCM
Proof of secondary meaning may nonetheless be relevant when determining 3
whether a suggestive mark has been infringed: Courts may ʺview evidence concerning the origin‐indicating significance of a mark in the marketplace as relevant to and probative of the strength of a mark and hence useful in assessing the likelihood of confusion.ʺ McGregor‐Doniger, 599 F.2d at 1132.
1 introduced its marks. See Cross Commerce Media, Inc. v. Collective, Inc., No. 13‐cv‐
2 2754 (KBF), 2014 WL 11343849, at *1, 12‐14, 2014 U.S. Dist. LEXIS 117244, at *2,
3 32‐38 (S.D.N.Y. Aug. 21, 2014) (the ʺAugust Orderʺ). The court therefore
4 dismissed CIʹs counterclaim for infringement of the unregistered mark
5 ʺcollective.ʺ
6 Surprisingly, we think, the August Order also dismissed CIʹs distinct
7 counterclaim for infringement of the registered marks. CCMʹs memorandum of
8 law in support of its summary judgment motion had advanced no argument
9 regarding that counterclaim. The memorandum mentioned the registered marks
10 only to argue that their validity (which CCM assumed for the sake of argument)
11 would not buttress CIʹs claim that the distinct, unregistered mark ʺcollectiveʺ was
12 protectable. In keeping with the cabined nature of CCMʹs memorandum, CIʹs
13 opposition papers focused exclusively on the counterclaim for infringement of
14 the unregistered mark ʺcollective,ʺ mentioning the registered marks only to
15 contend that their validity would, in fact, buttress that counterclaim. The district
16 court did not analyze the counterclaim for infringement of the registered marks
17 but nonetheless ruled that the counterclaim failed as a matter of law.
1 Having prevailed on CIʹs counterclaims for infringement, CCM moved for
2 several remedies: (1) an order compelling the PTO to cancel the registered marks
3 ʺCollective Networkʺ and ʺCollective Video,ʺ either because they were
4 descriptive and lacked secondary meaning or because CI had abandoned them;
5 (2) an order compelling the PTO to disclaim the term ʺcollectiveʺ within the
6 registered mark ʺC Collective The Audience Engineʺ because it is not
7 independently entitled to trademark protection; (3) attorneyʹs fees under the
8 Lanham Act; and (4) sanctions under various federal rules for abuse of the
9 discovery process. In a December 16, 2014 order, the district court granted
10 summary judgment for CCM on the issue of abandonment and awarded all of its
11 requested remedies except for sanctions, which the court deemed duplicative of
12 attorneyʹs fees under the Lanham Act. See Cross Commerce Media, Inc. v. Collective,
13 Inc., No. 13‐cv‐2754 (KBF), 2014 WL 7323419, at *1, 2014 U.S. Dist. LEXIS 177176,
14 at *2 (S.D.N.Y. Dec. 16, 2014) (the ʺDecember Orderʺ).
15 CI timely appealed the portions of the district courtʹs three orders that
16 dismissed its counterclaims and granted CCMʹs requested remedies.
1 DISCUSSION
2 ʺWe review a district courtʹs grant of summary judgment de novo,
3 construing the evidence in the light most favorable to the non‐moving party and
4 drawing all reasonable inferences in its favor.ʺ SCR Joint Venture L.P. v.
5 Warshawsky, 559 F.3d 133, 137 (2d Cir. 2009) (internal quotation marks omitted).
6 We will affirm only if ʺthere is no genuine dispute as to any material fact and the
7 movant is entitled to judgment as a matter of law.ʺ Fed. R. Civ. P. 56(a). An
8 issue of fact is genuine and material if the evidence is such that a reasonable jury
9 could return a verdict for the nonmoving party. See SCR, 559 F.3d at 137.
10 After applying that standard of review to the voluminous record in this
11 case, we reverse or vacate all contested portions of the March Order, August
12 Order, and December Order. We do so on four grounds. First, in our view the
13 unregistered mark ʺcollectiveʺ is suggestive, not descriptive. Second, there is a
14 genuine dispute of material fact as to whether CI used the unregistered mark
15 ʺcollectiveʺ in commerce before CCM introduced its allegedly infringing marks.
16 Third, the district court prematurely granted summary judgment as to CIʹs
17 counterclaim for infringement of the registered marks, an action that neither
18 party requested and the district court did not explain. Finally, there is a genuine
1 dispute of material fact as to whether CI abandoned its registered marks
2 ʺCollective Networkʺ and ʺCollective Video.ʺ We therefore remand the case for a
3 new round of summary judgment proceedings should either party choose to
4 pursue them.
5 I. Inherent Distinctiveness
6 A trademarkʹs inherent distinctiveness is a fact‐intensive issue. It must be
7 evaluated ʺin relation to the particular goods [to which the mark is attached], the
8 context in which it is being used, and the possible significance that the term
9 would have to the average purchaser of the goods because of the manner of its
10 use or intended use.ʺ Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
11 1378 (Fed. Cir. 2012) (internal quotation marks omitted). Applying that
12 contextual approach, we conclude that CIʹs use of the mark ʺcollectiveʺ is
13 suggestive as a matter of law, and that the district court committed clear error in
14 concluding otherwise. See Bristol‐Myers Squibb, 973 F.2d at 1040 (ʺWe will
15 substitute our own judgment [as to inherent distinctiveness] . . . if the district
16 courtʹs determination is clearly erroneous.ʺ).
17 Both descriptive and suggestive marks convey information about, and thus
18 are associated with, the product to which they are attached. The difference
1 between them lies in the immediacy of association — how quickly and easily
2 consumers grasp the nature of the product from the information conveyed. A
3 descriptive mark communicates ʺʹan immediate idea of the ingredients, qualities
4 or characteristics of the goods,ʹʺ Bernard, 964 F.2d at 1341 (quoting Abercrombie &
5 Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 11 (2d Cir. 1976) (Friendly, J.)), while a
6 suggestive mark requires consumers to employ ʺimagination, thought and
7 perception to reach a conclusion as to the nature of goods,ʺ Time, Inc. v. Petersen
8 Publʹg Co. L.L.C., 173 F.3d 113, 118 (2d Cir. 1999) (internal quotation marks
9 omitted). Thus, ʺ[i]f the mental leap between the word and the productʹs
10 attributes is not almost instantaneous, this strongly indicates suggestiveness, not
11 direct descriptiveness.ʺ 2 J. Thomas McCarthy, McCarthy on Trademarks and
12 Unfair Competition § 11:67 (4th ed.).
13 To determine the immediacy of association between a mark and a product,
14 we generally consider how specifically and exclusively the mark describes the
15 product. A descriptive mark, we have said, is one that ʺconjure[s] up the imageʺ
16 of the precise good with which it is associated. Playtex Prods., Inc. v. Ga.‐Pac.
17 Corp., 390 F.3d 158, 164 (2d Cir. 2004), superseded by statute on other grounds as
18 recognized in Starbucks Corp. v. Wolfeʹs Borough Coffee, Inc., 588 F.3d 97, 107‐08 (2d
1 Cir. 2009). A suggestive mark, by contrast, is ordinarily one that ʺdescribes an
2 attribute of the productʺ but ʺcould plausibly describe a wide variety of [other]
3 productsʺ as well. Id. In other words, the meaning of a descriptive mark is
4 narrowly tailored to its associated product, such that it calls that product
5 immediately to mind. The meaning of a suggestive mark typically evokes an
6 array of goods, which means that consumers must make an additional mental
7 effort to identify the associated product in particular.
8 Thus, in Playtex, we affirmed the district courtʹs conclusion that the mark
9 ʺWet Ones,ʺ used for moist towelettes, was suggestive rather than descriptive.
10 We reasoned that the mark evoked qualities (dampness and one‐by‐one usage)
11 that towelettes shared with a wide range of goods, which made it relatively
12 difficult for consumers to divine the nature of the particular product at issue
13 from the mark alone. See id. Similarly, we decided in Hasbro, Inc. v. Lanard Toys,
14 Ltd., 858 F.2d 70 (2d Cir. 1988), that the mark ʺGUNG‐HO,ʺ used for a marine
15 action figure, was suggestive because it described ʺelements of the personality
16 attributed to the [action figure], as well as other toys, without describing the
17 particular [action figure] itself or its differentiating qualities,ʺ id. at 75 (emphases
18 added). By contrast, we have classified the mark ʺSportscreme,ʺ used for an
1 analgesic rub designed for athletes, as descriptive because it specifically conjured
2 ʺa cream useful in connection with sports.ʺ Thompson Med. Co. v. Pfizer Inc., 753
3 F.2d 208, 216 (2d Cir. 1985).
4 Applying the same analytic framework here, we conclude that the mark
5 ʺcollectiveʺ is only suggestive of CIʹs products. As the district court noted,
6 Merriam‐Websterʹs online dictionary defines the adjective ʺcollectiveʺ as:
7 ʺdenoting a number of persons or things considered as one group or wholeʺ;
8 ʺformed by collecting: aggregatedʺ; and ʺof, relating to, or being a group of
9 individuals.ʺ Collective, Merriam‐Webster Online Dictionary,
10 http://www.merriam‐webster.com/dictionary/collective (last visited Aug. 9,
11 2016), [https://perma.cc/YU2F‐Q3JT]; see March Order, 2014 WL 1202939, at *5,
12 2014 U.S. Dist. LEXIS 38606, at *14.4 The same dictionary defines the noun
13 ʺcollectiveʺ as ʺa collective body: groupʺ or ʺa cooperative unit or organization.ʺ
14 Collective, Merriam‐Webster, supra.
The author of this opinion has noted elsewhere his ʺgeneral[] reticen[ce] to invoke 4
dictionary definitions, at least in contexts perhaps unforeseen by their writers.ʺ Mastrovincenzo v. City of New York, 435 F.3d 78, 107 (2d Cir. 2006) (Sack, J., concurring in part and dissenting in part). As the district court pointed out, however, the use of dictionaries for the purpose of deciding whether a trademark is descriptive is permissible. See March Order, 2014 WL 1202939, at *5, 2014 U.S. Dist. LEXIS 38606, at *13 (citing Coach Servs., 668 F.3d at 1378). Moreover, it seems to us that these definitions of ʺcollectiveʺ are reasonable and relatively uncontroversial. The district court therefore properly relied on them in the March Order, and we follow suit.
1 After reviewing the record, we find three plausible associations between
2 those definitions and CIʹs products. First, CI asserts that it is able to analyze vast
3 amounts of data in order to help clients identify effective marketing
4 opportunities, a service that could be described as ʺcollectiveʺ in nature — or,
5 perhaps, producing a ʺcollectiveʺ of relevant data. Second, CI points to its
6 capacity to identify marketing opportunities across multiple electronic devices,
7 which could be framed as offering consumers a ʺcollectiveʺ of marketing
8 platforms. And third, in the most general sense, the companyʹs software works
9 to aggregate advertising opportunities and present them, as a ʺcollective,ʺ to
10 users.
11 These associations lack the specificity that would enable an average
12 consumer to intuit the nature of CIʹs business from the ʺcollectiveʺ mark, at least
13 absent considerable imaginative effort (or luck). As in Playtex and Hasbro, the
14 mark has comparably strong associations with a range of distinct enterprises that
15 offer unrelated goods, including software, to consumers: Search engines and
16 investment advisers seek to aid their clients by analyzing ʺcollectivesʺ of data;
17 health insurers and banks serve clients across a ʺcollectiveʺ of platforms; and real
18 estate brokers and online ticket exchanges could be said to offer a ʺcollectiveʺ of
1 options for their clients to consider. Indeed, the word ʺcollectiveʺ might even
2 bring to mind businesses that could themselves be called ʺcollectives,ʺ such as
3 collective farms or collective grocery stores. When encountering CIʹs use of the
4 term ʺcollectiveʺ for the first time, therefore, the average consumer does not, in
5 our view, have a compelling reason to conclude that the company provides data‐
6 driven marketing tools. Conjuring the image of CIʹs software in particular,
7 rather than other goods or services that the word ʺcollectiveʺ might be used to
8 describe, demands a substantial mental leap. For that reason, we conclude that
9 ʺcollectiveʺ is a suggestive mark in this context.
10 In reaching a contrary conclusion, the district court did not adequately
11 evaluate the mental leap between the mark ʺcollectiveʺ and CIʹs products. After
12 reciting several of the dictionary definitions set forth above, the court observed:
13 ʺThis is precisely the manner in which [CI] uses the word; it is an advertising
14 network that offers a collection or collective of advertising opportunities.ʺ March
15 Order, 2014 WL 1202939, at *5, 2014 U.S. Dist. LEXIS 38606, at *14. Based on that
16 observation alone, the court then concluded that ʺ[t]he word ʹcollectiveʹ thus
17 literally describes ʹan immediate idea of the ingredients, qualities or
18 characteristicsʹ of [CI]ʹs product.ʺ Id. (quoting Bristol‐Myers Squibb, 973 F.2d at
1 1040). In doing so, the court mistakenly equated the fact of association (which
2 does not distinguish between descriptive and suggestive marks) with immediacy
3 of association (which does). The word ʺcollectiveʺ in CIʹs marks provides a clue
4 as to the nature of CIʹs products. But the critical inquiry, which the court did not
5 reach, is how easily consumers would deduce the nature of CIʹs products from
6 ʺcollectiveʺ alone.
7 The district court suggested that its decision was reinforced by two
8 additional considerations: the frequency with which third parties have used the
9 word ʺcollectiveʺ in their names, and the PTOʹs prior treatment of various
10 trademark applications containing that word. See id., 2014 WL 1202939, at *5,
11 2014 U.S. Dist. LEXIS 38606, at *14‐15. To be sure, such considerations may, in
12 some circumstances, inform a courtʹs evaluation of inherent distinctiveness. In
13 this case, however, the available evidence regarding third‐party usage is
14 indeterminate, while the PTOʹs prior practice indicates that ʺcollectiveʺ is a
15 suggestive mark.
16 As a general matter, information about how third parties have used a mark
17 in commerce may shed light on its inherent distinctiveness in several ways. First,
18 we have recognized that a mark is more likely to be descriptive, rather than
1 suggestive, if ʺ[a]ccording [it] trademark exclusivity . . . would inhibit
2 competitors from using descriptions of their competing products.ʺ TCPIP
3 Holding Co. v. Haar Commcʹns, Inc., 244 F.3d 88, 93‐94 (2d Cir. 2001); see also
4 PaperCutter, Inc. v. Fayʹs Drug Co., 900 F.2d 558, 563 (2d Cir. 1990) (noting that the
5 distinction between descriptive and suggestive terms may be sharpened by
6 ʺevaluation of . . . the potential impact on competitors of the appropriation of the
7 term as a trademark by a particular sellerʺ). Information about how rival third
8 parties have used a mark could be instructive in that regard: Consistent usage by
9 competitors might indicate that it is a vital descriptive tool in the industry, while
10 minimal usage might suggest the contrary. Additionally, as we have observed, a
11 mark is more likely to be suggestive, rather than descriptive, if its meaning
12 evokes a wide range of products. See Playtex, 390 F.3d at 164. Information about
13 how third parties in unrelated industries have used a mark could bear on that
14 issue: Widespread usage by different types of businesses might indicate that it
15 calls to mind a variety of products, while minimal usage might imply otherwise.
16 Here, the district court cited three statistics regarding third‐party usage of
17 the ʺcollectiveʺ mark: (1) ʺ[t]he word ʹcollectiveʹ is used in the name of over 7,000
18 businesses in 45 statesʺ; (2) ʺ[t]here are over 25,000 Internet domain names that
1 contain the word ʹcollectiveʹʺ; and (3) ʺmore than a dozen companies in the
2 digital advertising and marketing field . . . also use the word ʹcollective.ʹʺ March
3 Order, 2014 WL 1202939, at *5, 2014 U.S. Dist. LEXIS 38606, at *14‐15. These
4 statistics do not, in our view, provide enough information to be probative of the
5 markʹs inherent distinctiveness. It is unclear to what extent the first two numbers
6 pertain to CIʹs competitors (in which case widespread use might indicate that
7 ʺcollectiveʺ is descriptive) or third parties in unrelated industries (in which case
8 widespread use might indicate that ʺcollectiveʺ is suggestive). The third statistic
9 is somewhat more narrowly drawn, inasmuch as it relates only to companies
10 involved with digital marketing. Even so, however, it is not limited to
11 companies that produce software similar to CIʹs. And in any event, the fact that
12 a dozen digital‐marketing companies have used the word ʺcollectiveʺ is a
13 numerator without a denominator: A dozen companies could be a significant
14 portion of the digital‐marketing field (which might indicate that ʺcollectiveʺ is a
15 vital descriptive tool in the industry) or a tiny sliver (which might indicate that
16 competitors need not rely on ʺcollectiveʺ to describe their products). Overall,
17 therefore, the cited evidence of third‐party usage carries little weight regarding
18 the inherent distinctiveness of ʺcollectiveʺ in this case.
1 The PTOʹs prior treatment of trademark applications may inform a courtʹs
2 analysis of inherent descriptiveness in a different way. Before deciding whether
3 to grant an application, the agency determines the inherent distinctiveness of the
4 mark at issue — and, in many instances, its constituent parts. Because the
5 agency has developed expertise in trademarks, courts accord ʺgreat weightʺ to its
6 conclusions. Murphy Door Bed Co. v. Interior Sleep Sys., Inc., 874 F.2d 95, 101 (2d
7 Cir. 1989). Thus, if the PTO has previously classified the particular mark before
8 the court as either descriptive or suggestive, the court will generally follow suit
9 absent compelling grounds for disagreement. See, e.g., PaperCutter, 900 F.2d at
10 563 (ʺʹ[T]he decision of the [PTO] to register a mark without requiring proof of
11 secondary meaning affords a rebuttable presumption that the mark is more than
12 merely descriptive.ʹʺ (quoting McGregor‐Doniger, 599 F.2d at 1132)). And even
13 where the PTO has not previously considered the particular mark at issue, courts
14 may draw a measure of guidance from the way the agency has classified
15 analogous marks. See, e.g., Real News Project, Inc. v. Indep. World Television, Inc.,
16 No. 06 Civ. 4322 (GEL), 2008 WL 2229830, at *10‐13 & n.17, 2008 U.S. Dist. LEXIS
17 41457, at *30‐43 & n.17 (S.D.N.Y. May 27, 2008) (classifying the plaintiffʹs use of
18 the mark ʺREAL NEWSʺ as descriptive and noting that the PTOʹs classification of
1 similar marks incorporating the term ʺrealʺ as descriptive ʺconfirm[ed] the
2 Courtʹs analysisʺ).
3 The district court cited one statistic about the PTOʹs prior practice: The
4 agency ʺhas either required disclaimer of the use of the word ʹcollectiveʹ as being
5 descriptive or rejected the application entirely on the same basis in 186
6 instances.ʺ March Order, 2014 WL 1202939, at *5, 2014 U.S. Dist. LEXIS 38606, at
7 *15. Again, we are not convinced that this statistic is probative of inherent
8 distinctiveness. It pertains to all uses of the word ʺcollectiveʺ — not solely those
9 analogous to CIʹs use of the word, where the PTOʹs analysis would be of import.
10 And in any event, the figure is another numerator without a denominator. As
11 we understand the record, the PTO has required disclaimer of the word
12 ʺcollectiveʺ because it is descriptive, or rejected applications for the same reason,
13 186 times out of 534 — approximately thirty‐five percent of the time. Appʹx 81. It
14 is therefore far from clear that the PTO routinely classifies ʺcollectiveʺ as a
15 descriptive mark in any context, let alone the context relevant to this case.
16 In our view, the district court seems to have overlooked a more probative
17 fact about the PTOʹs prior practice: Although each of CIʹs registered marks
18 contains the word ʺcollective,ʺ the PTO did not disclaim that word as descriptive
1 — or, as far as we can tell from the record, require a showing of secondary
2 meaning — in any instance. That fact bolsters CIʹs argument that the mark
3 should be classified as ʺmore than merely descriptive.ʺ PaperCutter, 900 F.2d at
4 563 (internal quotation marks omitted).
5 We therefore reverse the portion of the March Order that concluded, as a
6 matter of law, that ʺcollectiveʺ is a descriptive mark. Although CI bore the
7 burden of proving ʺcollectiveʺ was suggestive, see Nola Spice Designs, L.L.C. v.
8 Haydel Enters., Inc., 783 F.3d 527, 536 (5th Cir. 2015) (noting that where the
9 moving party has pointed to the absence of evidence to prove a fact material to
10 an issue on which the opposing party has the burden of proof at trial, the
11 opposing party has ʺthe burden of demonstrating by competent summary
12 judgment proof that there is an issue of material fact warranting trialʺ (internal
13 quotation marks omitted)); Reese Publʹg Co. v. Hampton Intʹl Commcʹns, Inc., 620
14 F.2d 7, 11 (2d Cir. 1980) (concluding that where ʺthe mark is not registered,ʺ the
15 burden is on the proponent to ʺprove that its mark is a valid trademarkʺ), we
16 think that the relevant evidence already in the record when CCM moved for
17 partial summary judgment—including the dictionary definitions of ʺcollective,ʺ
18 the nature of CIʹs business, and the PTOʹs prior decisions regarding the
1 registered marks—uniformly supports the classification of ʺcollectiveʺ as a
2 suggestive mark. CI was not obligated to submit still more evidence to prevail
3 on the issue.5 Instead, we conclude that ʺcollectiveʺ is a suggestive mark, which
4 means it is entitled to some degree of trademark protection even absent proof of
5 secondary meaning. See McGregor‐Doniger, 599 F.2d at 1132. For that reason, we
6 also vacate the portion of the August Order that dismissed CIʹs counterclaim for
7 infringement of the unregistered mark ʺcollectiveʺ based on CIʹs purported
8 failure to show secondary meaning, along with the portion of the December
9 Order that compelled the PTO to disclaim the word ʺcollectiveʺ in ʺC Collective
10 The Audience Engine.ʺ
After issuing the March Order, the district court noted that it had classified 5
ʺcollectiveʺ as a descriptive mark in part because CI ʺfailed to submit any marketing materials, survey research, or even an affidavit supporting suggestiveness.ʺ December Order, 2014 WL 7323419, at *1, 2014 U.S. Dist. LEXIS 177176, at *3; see also August Order, 2014 WL 11343849, at *11 n.10, 2014 U.S. Dist. LEXIS 117244, at *31‐32 n.10 (reflecting similar reasoning). We have trouble following that rationale. CI moved to stay adjudication of the markʹs inherent distinctiveness until after its expert had the opportunity ʺto perform survey research into, among other things, the factual issues relevant to . . . inherent . . . distinctiveness.ʺ Declaration of Eric J. Andalman in Support of CIʹs Fed. R. Civ. P. 56(d) Motion to Continue or Defer CCMʹs Motion for Partial Summary Judgment at ¶ 8, Cross Commerce Media, Inc. v. Collective, Inc., No. 13‐cv‐2754 (S.D.N.Y. Jan. 21, 2014), ECF No. 41. The district court denied CIʹs request. We thus fail to see how CI could subsequently be faulted for failing to submit relevant survey research.
1 Finally, we note that when CCM moved for summary judgment as to CIʹs
2 counterclaim for infringement of the unregistered mark ʺcollective,ʺ it
3 presumably chose its arguments in light of the district courtʹs classification of the
4 mark ʺcollectiveʺ as descriptive. We direct the district court, on remand, to give
5 CCM a reasonable opportunity to re‐file for summary judgment as to this
6 counterclaim in light of our decision that the mark is suggestive. And, of course,
7 the district court may reopen discovery to the extent it deems necessary or
8 advisable.
9 II. CIʹs Use of ʺCollectiveʺ In Commerce
10 In addition to its rulings regarding inherent distinctiveness and secondary
11 meaning, the district court concluded that CIʹs counterclaim for infringement of
12 the unregistered mark ʺcollectiveʺ failed as a matter of law for an independent
13 reason: CI had not used the mark in commerce until after CCM introduced its
14 own marks. If that were so, CI would have possessed no rights that CCM could
15 infringe, thus dooming its counterclaim. See Hana Fin., Inc. v. Hana Bank, 135 S.
16 Ct. 907, 909 (2015) (ʺRights in a trademark are determined by the date of the
17 markʹs first use in commerce.ʺ). But the record contains colorable evidence that
18 CI began using ʺcollectiveʺ continually in commerce well before CCM employed
1 its allegedly infringing marks in 2011. This evidence precludes summary
2 judgment on the issue.
3 A mark is used in commerce when it is employed ʺto identify . . . goods or
4 servicesʺ sold to consumers ʺin a given market.ʺ ITC Ltd. v. Punchgini, Inc., 482
5 F.3d 135, 147 (2d Cir.), cert. denied, 552 U.S. 827 (2007). CI introduced the domain
6 name www.collective.com for its principal website in late 2008. That website
7 appears to have been commercial in nature: The record indicates that it
8 described CIʹs products and sought to explain what ʺset[] [the company] apartʺ
9 from its competitors. Appʹx 1095‐96. And soon after the site went live, CI
10 purchased several stand‐alone advertisements that directed consumers to
11 ʺcollective.comʺ for more information about the company. See Appʹx 1125‐27.
12 Taken together, this evidence tends to establish that CI put its domain name,
13 which features the stand‐alone mark ʺcollective,ʺ to continuous commercial use
14 beginning sometime before 2011. Although the district court correctly noted that
15 ʺthe use of a phrase in a domain name does not necessarily mean that it is being
16 used as a mark in commerce,ʺ August Order, 2014 WL 11343849, at *13, 2014 U.S.
17 Dist. LEXIS 117244, at *35‐36 (citing TCPIP Holding Co., 244 F.3d at 104), the court
18 erred in finding that, other than the use of ʺʹcollectiveʹ in its domain name and
1 email addresses,ʺ CI had ʺfailed toʺ ʺbring forth additional evidence that it used
2 the mark in its marketing materials,ʺ id. CI also used a capitalized version of the
3 mark, ʺCollective,ʺ to refer to itself on its website, see Appʹx 1095, and in its
4 advertising, see Appʹx 1125‐27. Those references could reasonably be considered
5 additional commercial uses of the mark. We therefore think that CI has raised a
6 genuine issue of material fact as to whether it began using ʺcollectiveʺ in
7 commerce before CCM introduced its allegedly infringing marks, and we vacate
8 the portion of the August Order that concluded otherwise.
9 III. CIʹs Counterclaim for Infringement of the Registered Marks
10 As we have noted, the district court dismissed CIʹs distinct counterclaim
11 for infringement of the registered marks without a thorough explanation. In this
12 Circuit, claims for infringement must be analyzed under a two‐prong test that
13 looks first to whether the allegedly infringed mark ʺis entitled to protection,ʺ and
14 second to whether use of the allegedly infringing mark ʺis likely to cause
15 consumers confusion as to the origin or sponsorshipʺ of the products to which it
16 is attached. Virgin Enters. Ltd. v. Nawab, 335 F.3d 141, 146 (2d Cir. 2003). The
17 likelihood of confusion must be analyzed with reference to the eight factors first
18 articulated in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961),
1 one of which is ʺthe degree of similarity between the two marks,ʺ id. This
2 framework has not been applied to CIʹs counterclaim for infringement of the
3 registered marks. CCM never moved for summary judgment as to protectability
4 or likelihood of confusion.
5 The district court may instead have concluded that CCM did not infringe
6 the registered marks solely because it did not use them verbatim. In the March
7 Order, the court observed: ʺThere is no allegation in this case that CCM has used
8 any of the [registered marks]. Rather, the issue before this Court is whether [CI]
9 has a right to exclude CCM from use of the word ʹcollectiveʹ in its mark.ʺ March
10 Order, 2014 WL 1202939, at *2, 2014 U.S. Dist. LEXIS 38606, at *5. Later, in the
11 August Order, the court reiterated: ʺThe key merits question in this litigation is
12 whether CI has a protectable mark in the single word ʹcollective.ʹʺ August Order,
13 2014 WL 11343849, at *11, 2014 U.S. Dist. LEXIS 117244, at *31. These passages
14 suggest that, in the district courtʹs view, the differences between CIʹs registered
15 marks and CCMʹs allegedly infringing mark were fatal to CIʹs counterclaim for
16 infringement of the registered marks. We are unable to square any such
17 conclusion with our case law. Although differences among the marks are
18 relevant to one of the eight Polaroid factors — the degree of similarity between
1 the marks — they are not independently dispositive of CIʹs counterclaim.
2 Because the district court has not yet performed the more comprehensive legal
3 analysis outlined above, we vacate the grant of summary judgment as to the
4 registered marks.
5 In light of the above‐quoted passage from the August Order, we think that
6 CCM may have understood the district court to suggest that CIʹs counterclaim
7 for infringement of the registered marks had effectively been dismissed. Indeed,
8 after the district court issued the August Order, CCM moved for cancellation of
9 two of the registered marks, a remedy eventually granted in the December
10 Order.6 CCM may have decided, on the basis of this understanding, to advance
11 further summary judgment arguments only as to the counterclaim for
12 infringement of the unregistered mark ʺcollective.ʺ To avoid undue prejudice,
13 we direct the district court, on remand, to permit CCM a reasonable opportunity
14 to move for summary judgment as to the counterclaim for infringement of the
In response, CI argued that cancellation would be inappropriate because the district 6
court had dismissed all counterclaims for infringement without addressing ʺthe validity of the registrations,ʺ which meant that its ʺrulingsʺ had ʺmooted any justiciable interest in cancellation of the registrations.ʺ Appʹx 1422. On appeal, CCM characterizes CIʹs argument on this point as a waiver of its counterclaim for infringement of the registered marks. We disagree. CI argued that the district courtʹs prior rulings had not analyzed the validity of its trademark registrations. The company did not disclaim its contention that CCM had infringed those registrations.
1 registered marks. Again, the district court may re‐open discovery to the extent it
2 deems necessary or advisable.
3 IV. Cancellation of Registered Marks
4 After granting summary judgment for CCM on CIʹs counterclaims, the
5 district court found that CI had abandoned the marks ʺCollective Networkʺ and
6 ʺCollective Videoʺ and, based on that abandonment, ordered the PTO to cancel
7 the corresponding registrations. See 15 U.S.C. § 1064(3) (authorizing petitions for
8 cancellation on ground of abandonment); id. § 1119 (empowering district courts
9 to compel cancellation). ʺTo determine that a trademark or trade name is
10 abandoned, two elements must be satisfied: non‐use of the name by the legal
11 owner and no intent by that person or entity to resume use in the reasonably
12 foreseeable future.ʺ Stetson v. Howard D. Wolf & Assocs., 955 F.2d 847, 850 (2d Cir.
13 1992) (citing Silverman v. CBS Inc., 870 F.2d 40, 45 (2d Cir. 1989)). The district
14 court concluded that CCM had satisfied both elements, as a matter of law,7
15 because ʺthe undisputed evidence reveal[ed] that CI has not used the marks
The district court construed CCMʹs motion for cancellation as one for summary 7
judgment, although it was not styled as such. See December Order, 2014 WL 7323419, at *2, 2014 U.S. Dist. LEXIS 177176, at *4‐5.
1 ʹCollective Videoʹ or ʹCollective Networkʹ in commerce.ʺ December Order, 2014
2 WL 7323419, at *2, 2014 U.S. Dist. LEXIS 177176, at *5. We disagree.
3 In our view, a reasonable factfinder could conclude that CI has made
4 extensive commercial use of both ʺCollective Networkʺ and ʺCollective Video.ʺ
5 CIʹs vice president and creative director, Britta Hoskins, stated in a declaration
6 that the company had ʺcontinuously and extensively used, advertised, and
7 promoted its services using the . . . trademarks COLLECTIVE NETWORK and
8 COLLECTIVE VIDEOʺ from February 2011 to October 2014. Declaration of Britta
9 Hoskins dated October 6, 2014, at 1‐2 (Appʹx 1428‐29). To support that assertion,
10 Hoskins attached several exhibits to her declaration: (1) a 2014 screenshot of a
11 page on CIʹs website with the heading ʺCollective Networkʺ and text describing
12 the companyʹs services, including a paragraph titled ʺWhy You Should Work
13 With Us,ʺ see id. at 2 & Ex. A (Appʹx 1429, 1433) (capitalization removed); (2) a
14 2013 screenshot of a page on CIʹs website that describes the advantages of the
15 ʺCollective Video experience,ʺ see id. at 3 & Ex. C (Appʹx 1430, 1438); (3) an
16 excerpt from CIʹs ʺstandard slide deck that it uses to respond to prospective
17 client[s],ʺ which lists the features of ʺCollective Video,ʺ see id. at 3 & Ex. B (Appʹx
18 1430, 1436); and (4) several stand‐alone advertisements for ʺCollective Videoʺ
1 that were created and distributed in 2011 or 2012, see id. at 3 & Ex. D‐F (Appʹx
2 1430, 1440, 1442, 1444). Taken together, this evidence could support a finding
3 that CI used the two marks in commerce for several years before this lawsuit was
4 commenced.
5 In concluding otherwise, the district court noted that another CI employee,
6 Aman Verjee, gave markedly different testimony about the companyʹs use of
7 ʺCollective Networkʺ and ʺCollective Video.ʺ Speaking as CIʹs corporate
8 representative under Federal Rule of Civil Procedure 30(b)(6), Verjee stated that
9 he was not aware of any commercial use of either mark. See May 29, 2014
10 Deposition of Aman Verjee, at 103:17‐104:15, 105:13‐18 (Appʹx 1402:17‐1403:15,
11 1404:13‐18). In the district courtʹs view, this testimony was decisive because it
12 was the only relevant evidence in the record: ʺAs CI has offered no evidence
13 supporting a specific use of the marks in commerce,ʺ the court reasoned, ʺthere is
14 no evidence counter to that of its own corporate designee on this topic, Aman
15 Verjee, who testified of no known use.ʺ December Order, 2014 WL 7323419, at *2
16 n.1, 2014 U.S. Dist. LEXIS 177176, at *5‐6 n.1. As we have noted, we find
17 Hoskinsʹ affidavit and corresponding exhibits to constitute such evidence,
18 thereby creating a genuine issue of material fact on the issue of commercial use
1 sufficient to defeat CCMʹs motion to cancel CIʹs trademark registrations.
2 Accordingly, we vacate the district courtʹs December Order finding that CI had
3 abandoned the marks ʺCollective Networkʺ and ʺCollective Video,ʺ and vacate
4 the district courtʹs subsequent cancellation order to the PTO.
5 V. Attorneyʹs Fees
6 In light of the foregoing, we also vacate the December Orderʹs award of
7 attorneyʹs fees. The Lanham Act authorizes such fees for the prevailing party in
8 ʺexceptionalʺ cases. 15 U.S.C. § 1117(a). Because neither party has yet prevailed,
9 the district courtʹs award was at best premature.
10 CONCLUSION
11 For the foregoing reasons, we REVERSE the district courtʹs orders in part,
12 VACATE them in part, and REMAND for further proceedings.