Gold on the Limited Protection Afforded Geographically Descriptive Marks in Vail Associates, Inc. v. Vend-Tel-Co, Ltd, 516 F.3d 853 (10th Cir. 2008)
Can the owner of a registered, geographically descriptive service mark prevent others from using the descriptive mark in connection with related, but not directly competitive services? In addressing this question, Andrew M. Gold, a partner in the Oakland firm of Bogatin, Corman & Gold, analyzes the case of Vail Associates, Inc. v. Vend-Tel-Co, Ltd, 2008 U.S. App. LEXIS 2782 (10th Cir. 2008). In Vail Associates, plaintiff Vail Associate, Inc., the owner of “Vail Ski Resort,” held a registered service mark in the geographically descriptive term “Vail.” Defendant Vend-Tel-Co offered marketing services related to the ski industry and held a registered service mark in 1-800-SKI-VAIL. Plaintiff claimed that defendant’s use of the geographically descriptive term “VAIL” incombination with the descriptive term “SKI” infringed its VAIL service mark. In analyzing the 10th Circuit’s decision, which affirmed the district court’s finding that plaintiff failed to prove a likelihood of confusion, Mr. Gold writes:
Defendant’s expert noted that the “Vail” mark could be considered weak or strong, depending on the context. In the specific context of ski resort services, the mark is very strong, probably world renowned. However, since Vail is inherently a geographically descriptive mark, and has been used for a long time by third parties for a variety of goods and services related to the Vail, Colorado area, it is not a strong mark outside of the narrow context of ski resort services, and is a term that members of the commercial public have a right to use. Indeed, as the expert noted “One doing business in and around Vail, Colorado pretty much has to use the word Vail to get the idea across.”
. . . .
Evidence of actual confusion is often introduced through the use of surveys “although their evidentiary value depends on the methodology and questions asked.” Prior to the trial, the district court conducted a Daubert hearing to decide whether to admit plaintiff’s survey evidence. At the hearing, defendant introduced the unrebutted testimony of a marketing professor who testified that plaintiff’s survey suffered from systematic design flaws and failed to comply with generally accepted survey principles. In particular, the survey suffered from question bias, interviewer bias, location bias, participant bias and timing bias.
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Secondary meaning is a doctrine of trademark law that provides that protection is afforded to the user of an otherwise unprotectable mark when the mark, through advertising or other exposure, has come to signify that an item or service is produced or sponsored by that user. The court acknowledged that the Vail mark had achieved secondary meaning. However, establishing secondary meaning does not provide the mark holder with an exclusive right to use the mark in its original descriptive sense. Secondary meaning provides the mark holder “an exclusive right not in the original, descriptive sense, but only in the secondary one associated with the mark holder’s goods.” Moreover, the use of a similar mark by others tends to dilute any consumer recognition and association of the mark with the alleged owner, and such use is relevant to the issue of secondary meaning. The fact that a trademark has achieved status as an incontestable mark does not necessarily dictate a conclusion that the mark is strong.
(footnotes and citations omitted)