# RICHARDSON v. CASCADE SKATING RINK

> District Court, D. New Jersey · August 16, 2024

URL: https://www.frixlaw.com/law-library/cases/10656450

## Case

- **Court:** District Court, D. New Jersey
- **Decided:** August 16, 2024
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

## Citator (automated)

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- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/10656450

## How later opinions describe it (automated extraction)

- concluding that the lack of customer surveys and testimony supported a finding that the term did not acquire a secondary meaning in Florida
- finding that newspaper and magazine articles referenced by the plaintiff did not support its assertion that the mark acquired a secondary meaning at the time and place that the defendant began using the mark
- finding that little imagination was needed to conclude that “MUTUAL FUND REPORT CARD” referred to a specific type of information product
- finding that “BREAK & BAKE” was not suggestive for a type of cookie dough because it “directly describe[d] the process of preparing the cookies”
- applying the 11 factors to a trade-dress infringement claim

## Opinion text

UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY

DELLISA RICHARDSON,
Case No. 19–08935-ESK-EAP
Plaintiff,

v.
OPINION
CASCADE SKATING RINK and
LIVE LIFE HEADPHONES LLC
Defendants.
KIEL, U.S.D.J.
THIS MATTER is before the Court on pro se1 plaintiff Dellisa Richardson’s
motion for summary judgment (ECF No. 183 (Pl.’s Mot. Summ. J.)) and
defendants Cascade Skating Rink (Cascade) and Live Life Headphones, LLC’s
(Live Life) cross-motions for summary judgment (ECF Nos. 188, 191). Plaintiff
filed a reply. (ECF No. 193 (Pl.’s Reply Br.)) I ordered the parties to
supplement their briefing with responses to each other’s statements of material
facts (ECF No. 204), which the parties provided (ECF No. 206, ECF No. 207 (Pl.’s
Resp. Facts), ECF No. 208). For the reasons that follow, plaintiff’s motion will
be DENIED and defendants’ operative cross-motion will be GRANTED.

1 Plaintiff moved for appointment of pro bono counsel in November 2021. (ECF
Nos. 78, 79.) Magistrate Judge Matthew J. Skahill denied the motion without
prejudice. (ECF No. 101 pp. 2–8.) Nonetheless, the docket indicates that plaintiff
was briefly represented by David Michael White of Seton Hall University School of
Law’s Conflict Management Program. (ECF Nos. 131, 136, 139.) Plaintiff was also
represented pro bono by Jay DiMarino for the limited purpose of consultation during
settlement discussions. (ECF No. 148.)
Defendants’ duplicative cross-motion at ECF No. 1882 will be administratively
terminated as moot.
I. FACTS AND PROCEDURAL HISTORY
Plaintiff owns the trademark “SILENT SKATE,” listed on the United
States Patent and Trademark Office (USPTO) Supplemental Register under
Registration Number 5,699,688. (ECF No. 191–6 (Defs.’ Ex. A) p. 2.) The
mark, registered on March 12, 2019, indicates that it was first used on
December 7, 2015 and first used in commerce on May 6, 2016. (Id.) It relates
to “[a]rranging, organizing, conducting, and hosting social entertainment
events; Hosting social entertainment events, namely, skating events, for
others.” (Id.) The mark disclaims exclusive right to use the term “SKATE.”
(Id.) Silent skating refers to events in which participants roller skate while
wearing headphones and are able to flip through three different music options.
(ECF No. 191–10 (Defs.’ Ex. D) p. 23:5–15.)
Plaintiff has at times included her nickname, “Peachie,” while using her
mark in commerce and has not regularly included trademark symbols or
otherwise indicated that SILENT SKATE is trademarked. (ECF No. 191–7.)
Plaintiff has spent approximately $3,500 on expenses related to her mark and
does not have a monthly marketing budget. (Defs.’ Ex. D pp. 116:17–19, 122:8–
9.) She has never licensed her mark for a fee. (Id. pp. 122:16 to 123:4.)
Plaintiff estimated that she averaged a net profit of between $20,000 and
$25,000 per year prior to the pandemic in 2020, at which time her net profit
dropped to $0. (Id. pp. 89:9 to 90:5) She has policed her mark, sending

2 Following defendants’ filing of their cross-motion docketed at ECF No. 188,
District Judge Noel L. Hillman (Ret.) noted that it was purportedly filed by defense
counsel Christopher Warren, who had previously withdrawn. (ECF No. 189.) Judge
Hillman ordered active counsel to file a substitute motion on behalf of defendants (id.),
resulting in ECF No. 191. The filings are virtually identical. Because I will grant
the operative substitute cross-motion, I find that the cross-motion it replaced may be
terminated.
approximately 12 to 15 cease-and-desist letters in an effort to avoid market
confusion. (Id. pp. 95:6–9, 107:18–22.)
Cascade and Live Life are both based in Georgia. (ECF No. 191–11
(Defs.’ Ex. E) pp. 2, 5.) The parties do not dispute that Cascade and Live Life
have not hosted any relevant event outside of Georgia or South Carolina. (Pl.’s
Resp. Facts p. 2.) Plaintiff hosted two or three silent skating events in Georgia
between September 2016 and September 2017. (ECF No. 24 (Pl.’s Mot. Default
J.) pp. 8–13.)3 The record does not demonstrate that plaintiff has since hosted
additional events in the region.
Plaintiff attended skating events hosted by Cascade. (ECF No. 187–1
(Pl.’s Mot. Ex.) pp. 9–12.) Following a “Silent Skate” hosted by Cascade and
promoted by Live Life (id. p. 14), plaintiff alleges that she sent a cease-and-
desist letter to Cascade and Live Life (Pl.’s Mot. Summ. J. p. 9). Though Juan
Moore, an independent contractor who provides promotional services for Live
Life, emailed plaintiff that her mark would not be used in the future, “Silent
Skate” and “Silent Sk8” events continued to be held. (Pl.’s Mot. Ex. pp. 15–26.)
Moore filed a declaration stating that he had not heard of plaintiff prior to her
emailing him through a mutual acquaintance in June 2018. (Defs.’ Ex. E p. 9.)
Live Life’s sole member, Jesse Robinson, asserts that he had not heard of
plaintiff until Moore informed him of plaintiff’s allegations in June 2018. (Id.
p. 6.) Cascade owner Greg Alexander also filed a declaration stating that he
had not heard of plaintiff prior to receipt of a cease-and-desist letter in April
2019. (Id. p. 2.)

3 The parties dispute whether plaintiff hosted two or three events in Georgia,
with defendants, citing the amended complaint, claiming that she has hosted two
events while plaintiff claims that she hosted a third in March 2017. (Pl.’s Resp. Facts
p. 2.) The social-media post from the March 2017 event does not indicate who hosted
the event. (Pl.’s Mot. Default J. p. 13.) Ultimately, whether plaintiff hosted two or
three events is not determinative for the forthcoming analysis.
Plaintiff has provided images of text messages indicating that she had a
phone call scheduled with Moore to discuss potential business. (Pl.’s Mot. Ex.
pp. 4–6.) However, Moore attests that plaintiff claimed that she had a patent
for silent roller skating events and requested a fee in exchange for permission
for Live Life to hold future events. (Defs.’ Ex. E pp. 9, 10.) When Moore
requested documentary support for plaintiff’s claims, plaintiff provided a
blurred-out USPTO notice and tax documents and nothing further. (Id.)
Moore did not hear again from plaintiff until she sent a cease-and-desist letter
to Cascade, which was forwarded to Live Life. (Id.)
Live Life applied for the trademark “SILENT SK8” and was rejected in a
December 6, 2020 USPTO letter. (Defs.’ Ex. A pp. 26–31, 43–49.)
Reconsideration was denied. (ECF No. 207–1 pp. 1, 2.) Final refusal was
premised, in part, on a likelihood of confusion with plaintiff’s mark, including
SILENT SKATE and SILENT SK8 having the same meaning, their “phonetic
equivalen[cy],” and their related services. (Defs.’ Ex. A pp. 44–46.) Refusal
was also based on the examining attorney’s conclusion that the applied-for
mark was “merely descriptive.” (Id. pp. 46–48.)
Plaintiff filed this action for trademark infringement on March 25, 2019.
(ECF No. 1.) As amended,4 she alleges that she was a customer of Cascade’s
for nearly 20 years and attended its annual Skate-A-Thon event, later joining
the Skate-A-Thon team to host events in 2016 and 2017. (ECF No. 17 p. 4.)

4 Plaintiff moved to amend on September 27, 2021 (ECF No. 75), which Judge
Skahill denied (ECF Nos. 76, 84). Plaintiff nonetheless filed an amended complaint.
(ECF No. 158.) I noted this unpermitted amended complaint, identified the amended
complaint filed under ECF No. 17 as the operative pleading, and provided plaintiff 14
days to show cause why the filing under ECF No. 158 should not have been stricken
from the docket. (ECF No. 199 (Mot. Strike Op.) p. 1 n. 2.) After consideration of
plaintiff’s response (ECF No. 203), I ordered that ECF No. 158 be stricken and clarified
that the amended complaint under ECF No. 17 is the operative pleading. (ECF No.
204.)
Prior to a silent skating event hosted by Cascade in November 2018, plaintiff
claims that she notified Cascade of her “patent status”5 and emailed cease-and-
desist letters. (Id.) Despite being assured by Moore that events would no
longer be hosted using her mark, plaintiff claims that infringement continued—
resulting in lost business and damaged reputation and goodwill. (Id. pp. 4, 5.)
Plaintiff seeks damages in excess of $1 million. (Id. p. 6.)
Plaintiff moved for a preliminary injunction on August 6, 2021. (ECF No.
56.) Defendants moved for judgment on the pleadings on October 19, 2021.
(ECF No. 77.) Judge Hillman granted plaintiff’s motion for a preliminary
injunction in a March 21, 2022 opinion and order. (ECF No. 98 (Prelim. Inj.
Op.), ECF No. 99.) Judge Hillman concluded that plaintiff demonstrated a
likelihood of success on the merits for her infringement action, focusing the
analysis on the lone disputed element of the claim—likelihood of confusion.
(Prelim. Inj. Op. pp. 4–9.) Judge Hillman later denied defendants’ motion for
judgment on the pleadings, finding that “the Court ha[d] already determined
that [p]laintiff state[d] a claim for trademark infringement based on the Court’s
analysis of her likelihood of success on the merits in addressing the motion for
a preliminary injunction.” (ECF No. 103 (Mot. J. Pleadings Op.) p. 11, ECF No.
104.)
Plaintiff proceeded to file a motion to strike, a motion for judgment on the
pleadings, and a motion for sanctions, the first and third motions related to the
participation of Stephen Reich, pro hac vice counsel for defendants. (ECF Nos.
128, 144, 167.) Judge Hillman held a motion hearing on December 5, 2023
(ECF No. 181) and denied plaintiff’s motion to strike as moot and recognized
plaintiff’s withdrawal of her motion for judgment on the pleadings. (ECF Nos.
185, 186).

5 Plaintiff clarified in her motion brief that her only cause of action is trademark
infringement and her reference to “patent status” was merely an “inartful description
of her trademark.” (Pl.’s Mot. Summ. J. p. 15.)
This case was reassigned to me following the parties’ filing of motions for
summary judgment. (ECF No. 197.) I denied plaintiff’s still-pending motion
for sanctions, concluding that plaintiff failed to establish that defendants
violated the preliminary injunction and that any issues concerning Reich’s
representation were cured by Magistrate Judge Elizabeth A. Pascal’s order
admitting him pro hac vice. (Mot. Strike Op., ECF No. 200.)
II. STANDARD AND PARTY ARGUMENTS
A. Motions for Summary Judgment
The Federal Rules of Civil Procedure dictate that a “court shall grant
summary judgment if the movant shows that there is no genuine dispute as to
any material fact and the movant is entitled to judgment as a matter of law.”
Fed. R. Civ. P. 56(a). A dispute is genuine when “the ‘evidence is such that a
reasonable jury could return a verdict for the nonmoving party’” and a fact is
“‘material’ if it ‘might affect the outcome of the suit under the governing law.’”
Razak v. Uber Techs., Inc., 951 F.3d 137, 144 (3d Cir. 2020) (quoting Anderson
v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). Facts and evidence are to be
viewed in the light most favorable to the nonmovant. Id.
B. Party Arguments
Defendants contend that plaintiff cannot meet her burden of showing that
she owns a valid, protectable mark because her mark was filed on the
Supplemental Register rather than the Principal Register and thus does not
carry a presumption of validity. (ECF No. 191–2 (Defs.’ Cross Mot. Br.) p. 8.)
Marks that are generic are never protectable, according to defendants, and
descriptive marks are only protectable if the mark has acquired a secondary
meaning. (Id. pp. 9–11.) Defendants first argue that plaintiff’s mark is
generic because “silent” is a common term for events featuring three-channel
headphones, plaintiff has not supported her position with consumer surveys or
trade journals, and there is no genuine dispute that consumers identify
SILENT SKATE with the service rather than plaintiff’s brand. (Id. pp. 11–15.)
Alternatively, defendants claim that the mark is merely descriptive, relying—
in part—on the USPTO’s denial of Live Life’s similar SILENT SK8 application.
(Id. pp. 17–19.) Plaintiff’s mark has not acquired a secondary meaning,
according to defendants, citing plaintiff’s inconsistent use of the mark, modest
advertising budget, refusal to provide financial records, and failure to ever
license the mark. (Id. pp. 20–28.) Finally, even if the mark is valid,
defendants claim that they engaged in fair use. (Id. pp. 29–31.)
Registration of her mark is prima facie evidence of its validity, according
to plaintiff, meaning that it is entitled to a strong presumption that it is not
merely descriptive. (Pl.’s Mot. Summ. J. p. 14.) Defendants have hosted
numerous events that have infringed on her mark, leading to lost business
opportunities and reputational harms. (Id. pp. 16–18.) Plaintiff contends
that SILENT SKATE is suggestive rather than descriptive because the two
terms together suggest that the service is quiet when in fact the wireless
headphones provide loud music. (Pl.’s Reply Br. p. 13.) SILENT SKATE “is
considered suggestive and not descriptive because it is witty, unconventional,
and requires imagination on the part of the reader,” according to plaintiff. (Id.)
Competitors’ ability to use alternative language to describe their services
further supports finding that her mark is suggestive, plaintiff claims. (Id.
p. 15.)6

6 Plaintiff dedicates a significant portion of her reply brief seeking to strike
defendants’ briefing and exhibits due to Reich’s participation. (Pl.’s Reply Br.)
Similar arguments were already addressed in my opinion and order denying plaintiff’s
motion for sanctions and they will not be revisited here.
III. ANALYSIS
A. Trademark Infringement and the
Supplemental Register
“[T]o win a trademark claim, a plaintiff must establish that (1) the marks
are valid and legally protectable; (2) the marks are owned by the plaintiff; and
(3) the defendant’s use of the marks to identify goods or services is likely to
create confusion concerning the origin of the goods or services.” Kars 4 Kids
Inc. v. Am. Can!, 8 F.4th 209, 218 (3d Cir. 2021) (alteration in original) (quoting
Opticians Ass’n of Am. v. Indep. Opticians of Am., 920 F.2d 187, 192 (3d Cir.
1990)). The issue before Judge Hillman at the injunction stage was the
likelihood of confusion. (Prelim. Inj. Op. pp. 4, 5.) Here, defendants argue
that, because plaintiff’s mark appears on the Supplemental Register rather
than the Principal Register, “it does not carry the presumptions of validity or
ownership” and plaintiff cannot meet her burden of demonstrating that her
mark is valid and protectable. (Defs.’ Cross Mot. Br. p. 8.)
Registration of a mark on the Principal Register serves as prima facie
evidence of the mark’s validity, its owner’s ownership, and the owner’s exclusive
right to use the mark in connection with the specified goods or services. 15
U.S.C. §§ 1057(b), 1115(a). Registration on the Supplemental Register is not
accompanied by such advantages. 15 U.S.C. § 1094; see also 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition § 19:36 (5th ed.
2024) (“In litigation where plaintiff has a Supplemental Registration, the mark
will not, prima facie, receive protection as a valid trademark, for its very
presence on the Supplemental Register indicates a preliminary determination
that the mark is not distinctive of the applicant’s goods.”).
Though registration on the Supplemental Register “creates no substantive
rights,” the “mark may nonetheless be valid and legally protectable,
notwithstanding its exclusion from the Principal Register, ‘if the public
recognizes it as identifying the claimant’s “goods or services and distinguishing
them from those of others.”’” Com. Bancorp, Inc. v. BankAtlantic, 285 F. Supp.
2d 475, 484 (D.N.J. 2003) (quoting Novartis Consumer Health, Inc. v. McNeil-
PPC, Inc., Case No. 99–00280, 1999 WL 707721, at *4 (D.N.J. Sept. 13, 1999)
and then A.J. Canfield Co. v. Honickman, 808 F.2d 291, 296 (3d Cir. 1986)).
The validity of a mark on the Supplemental Register “depends on proof of
secondary meaning, unless the registered mark is inherently distinctive.” See
id.
Courts determine the protectability of a mark by identifying its
classification: 1) generic, 2) descriptive, 3) suggestive, or 4) arbitrary or fanciful.
See id. Suggestive, arbitrary, and fanciful terms are inherently distinctive and
protectable. J & J Snack Foods, Corp. v. Earthgrains Co., 220 F. Supp. 2d 358,
376 (D.N.J. 2002). Generic terms receive no protection. Id. at 375.
“Descriptive terms only enjoy trademark protection if they have acquired a
secondary meaning in the minds of the consuming public.” Id.
The classification of a term and whether it has acquired a secondary
meaning are questions of fact. See E.T. Browne Drug Co. v. Cococare Prods.,
Inc., 538 F.3d 185, 192 (3d Cir. 2008). “However, mark classification, ‘as with
any question of fact[,] can be resolved on summary judgment if the evidence is
so one-sided that there can be no doubt about how the question should be
answered’” and such questions are frequently resolved at summary judgment.
Engage Healthcare Commc’ns, LLC v. Intellisphere, LLC, Case No. 12–00787,
2018 WL 10339218, at *6 (D.N.J. Nov. 29, 2018) (alteration in original) (quoting
interState Net Bank v. NetB@nk, Inc., 221 F. Supp. 2d 513, 516 (D.N.J. 2002));
see also E.T. Browne Drug Co., 538 F.3d at 192 (affirming on alternative
grounds and holding that, while evidence was sufficient to create a genuine
issue of material fact as to whether the term was generic or descriptive,
insufficient evidence was produced to create a genuine issue as to whether the
term acquired a secondary meaning). Because I conclude that no reasonable
jury could conclude that the mark is inherently distinctive and entitled to
protection, I will enter summary judgment in favor of defendants.
B. Plaintiff’s Mark is No More Than
Descriptive
The parties dispute the characterization of SILENT SKATE, with plaintiff
asserting that the term is suggestive and therefore protectable while
defendants claim that it is either generic or descriptive without a secondary
meaning. (Defs.’ Cross Mot. Br. pp. 11–28, Pl.’s Reply Br. pp. 13–15.)
Significantly, Judge Hillman declined to rule on SILENT SKATE’s
classification. (Mot. J. Pleadings Op. p. 12.) Rather, Judge Hillman adopted
his finding of the mark’s validity from his preliminary injunction opinion,
expressly stated that he was “not ruling that Defendant[s were] incapable of
proving that the mark is generic,” and concluded that such analysis was better
suited for a more fully developed record. (Id. pp. 11, 12.)
It is plaintiff’s burden to prove that her mark is protectable because it does
not appear on the Principal Register. See E.T. Browne Drug Co., 538 F.3d at
191. Suggestive marks suggest the qualities and characteristics of the
product, but imagination, thought, or perception are necessary to determine the
actual nature of the product. MNI Mgmt., Inc. v. Wine King, LLC, 542 F. Supp.
2d 389, 405 (D.N.J. 2008). Descriptive marks “describe the intended purpose,
function, use, size, or class of users of the goods, and convey an immediate idea
of the qualities or characteristics of the good.” Id. Generic marks “function
as the common descriptive name of a product class.” Id. The difference
between generic and descriptive terms is a matter of degree rather than type.
J & J Snack Foods, Corp., 220 F. Supp. 2d at 375–76. A mark’s “very presence
on the Supplemental Register indicates a preliminary determination that the
mark is not distinctive of the applicant’s goods.” 2 J. Thomas McCarthy,
supra, § 19:36.
The “imagination test” is the most popular means of determining whether
a term is descriptive or suggestive, under which “[a] term is suggestive if it
requires imagination, thought or perception to reach a conclusion as to the
nature of goods. A term is descriptive if it forthwith conveys an immediate
idea of the ingredients, qualities or characteristics of the goods.” Engage
Healthcare Commc’ns, LLC, 2018 WL 10339218, at *8 (quoting Dranoff-
Perlstein Assocs. v. Sklar, 967 F.2d 852, 858 (3d Cir. 1992)); Duffy v. Charles
Schwab & Co., Inc., 97 F. Supp. 2d 592, 599 (D.N.J. 2000) (same). Plaintiff
contends that her mark is suggestive because the word “silent” is an illusion.
(Pl.’s Reply Br. p. 13.) Skaters are not actually skating in complete silence but
rather have the option of listening to music through wireless headphones. (Id.)
The event space may also not be silent as roller skates make sounds when used
and customers may sing or clap along to the music. (Id.) Finally, plaintiff
states that her “mark is considered suggestive and not descriptive because it is
witty, unconventional, and requires imagination on the part of the reader.”
(Id.) I disagree.
The Third Circuit recently held that “Peer-Spectives” was descriptive of
medical education courses in a manner similar to “chocolate fudge” describing
a flavor of soda. Engage Healthcare Commc’ns, LLC v. Intellisphere, L.L.C.,
792 F. App’x 178, 186–87 (3d Cir. 2019) (discussing A.J. Canfield Co.). Little
imagination was needed for a customer to conclude that “Peer-Spectives” stood
for “Peer Perspectives” or that a publisher within the healthcare industry would
want peer perspectives associated with their publications. Id. at 187; see also
Duffy, 97 F. Supp. 2d at 599 (finding that little imagination was needed to
conclude that “MUTUAL FUND REPORT CARD” referred to a specific type of
information product). The same principle applies here. No imagination is
needed for a customer to conclude that SILENT SKATE refers to skating in
silence, whether that silence is perceived by the skaters themselves or others
in the event space.
The fact that skaters may be listening to music or making noise
themselves does not make the mark suggestive. First, defendants’ exhibits
showing that “silent” has been combined with disco, paint and sip, and other
skating events provide some, if not determinative, indication that the
consuming public does not interpret “silent” so literally. (ECF Nos. 191–8,
191–9.) Plaintiff does not dispute that the word “silent” is used to advertise
activities utilizing headphones. (Pl.’s Resp. Facts p. 3.) Even without this
context, however, SILENT SKATE “is a succinct and exact definition of the use
of this particular type” of event, even if some customers may not have seen
“silent” used in a similar way. See J & J Snack Foods, Corp., 220 F. Supp. 2d
at 378 (finding that “BREAK & BAKE” was not suggestive for a type of cookie
dough because it “directly describe[d] the process of preparing the cookies”).
Second, that SILENT SKATE may not be all-inclusive of the customer
experience does not lead to a distinctive classification. For instance, in Vista
India v. Raaga, LLC, the court concluded that “RAAGA” was no more than
descriptive because a customer would immediately understand that the goods
sold were music, specifically Indian music, even though other South Asian
music and film products were also sold. 501 F. Supp. 2d 605, 617–18 (D.N.J.
2007). That a customer may skate in silence, listen to music, sing, or make
other noise does mean that more imagination, thought, or perception is required
to understand plaintiff’s events.
Finally, the relative wittiness of plaintiff’s mark is not determinative of
whether it is suggestive. “[T]he difference between a descriptive term and a
suggestive term is not one of wittiness or conceivability, but depends on
whether the term identifies a quality of the article or merely suggests the
nature of the goods.” J & J Snack Foods, Corp., 220 F. Supp. 2d at 379.
Again, plaintiff’s mark directly describes two prominent features of her events.
I conclude that no reasonable jury could determine that SILENT SKATE is
suggestive and the mark is, at best, descriptive. Because I find below that the
mark has not acquired a secondary meaning, I need not decide here whether
SILENT SKATE is generic or descriptive. Duffy, 97 F. Supp. 2d at 599.
C. The Mark Has Not Acquired a Secondary
Meaning
The Third Circuit has identified a non-exhaustive list of 11 factors used to
determine whether a term has acquired a secondary meaning:
(1) the extent of sales and advertising leading to buyer
association; (2) length of use; (3) exclusivity of use; (4) the
fact of copying; (5) customer surveys; (6) customer
testimony; (7) the use of the mark in trade journals; (8)
the size of the company; (9) the number of sales; (10) the
number of customers; and, (11) actual confusion.

E.T. Browne Drug Co., 538 F.3d at 199 (quoting Com. Nat’l Ins. Servs., Inc. v.
Com. Ins. Agency, Inc., 214 F.3d 432, 438 (3d Cir. 2000)).
The more descriptive the term is, the higher the evidentiary bar. Id. “A
plaintiff must establish secondary meaning in a mark at the time and place that
the defendant began use of the mark.” Vista India, 501 F. Supp. 2d at 613
(quoting Com. Nat’l Ins. Servs., Inc., 214 F.3d at 438). The secondary-meaning
test is not to be based upon a mechanical application of the 11 factors or
counting how many factors a plaintiff does or does not satisfy. Engage
Healthcare Commc’ns, LLC, 792 F. App’x at 185. Rather, “the hallmark of
secondary meaning remains ‘when the mark is interpreted by the consuming
public to be not only an identification of the product or services, but also a
representation of the origin of those products or services.’” Id. (quoting Com.
Nat’l Ins. Servs., Inc., 214 F.3d at 438).
An analysis of the relevant factors leads me to conclude that plaintiff, at
times by her own admission, has failed to establish that SILENT SKATE has
acquired a secondary meaning.
First, with respect to size, sales, and advertising, plaintiff concedes that
her business has never generated more than $20,000 in a year, she does not
have an advertising budget, and she has not invested more than $3,500 in her
mark. (Pl.’s Resp. Facts p. 4.) She admits that she has not provided tax
returns or other financial documents during this litigation. (Id. pp. 3, 4.)7
Elsewhere in her deposition testimony, plaintiff claimed that she spent
approximately $1,500 to $2,000 per year on marketing and did not generate any
income during 2020 due to the pandemic. (Defs.’ Ex. D pp. 90:2–5, 117:22–25.)
Plaintiff’s estimated profits, which cannot even be corroborated by tax
documents or other accountings, combined with her modest, ad-hoc marketing
disfavors finding that SILENT SKATE has acquired a secondary meaning.
See Chrin Hauling, Inc. v. Chrin, Case No. 21–03328, 2023 WL 6985660, at *6
(E.D. Pa. Oct. 23, 2023) (finding that the plaintiffs did not engage in extensive
advertising, plaintiffs did not keep a record of their advertising budget, and the
reach of plaintiffs’ advertisements was unclear, cutting against a finding of
secondary meaning); Diamond State Door, LLC v. Diamond State Pole Bldgs.,
LLC, Case No. 21–01258, 2023 WL 3625000, at *9 (D. Del. May 24, 2023)
(granting summary judgment and concluding that the plaintiff’s mark did not

7 Plaintiff disputes, however, defendants’ assertion that she has failed to provide
any documentation of actual damages as she has elected to seek statutory damages
pursuant to 15 U.S.C. § 1117. (Pl.’s Resp. Facts pp. 3, 4.) Courts possess broad
discretion in setting statutory damages awards, but such awards are nonetheless
intended to serve as a substitute for actual damages and thus ought to bear some
resemblance to actual damages suffered. See Chanel, Inc. v. Matos, 133 F. Supp. 3d
678, 687 (D.N.J. 2015). Because I find against plaintiff, I need not determine an
appropriate award and, instead, consider plaintiff’s lack of documentation solely for
the purpose of determining whether SILENT SKATE has acquired a secondary
meaning.
acquire a secondary meaning, in part, because the plaintiff did not conduct
extensive advertising or provide evidence of its size, sales, or customer base “to
support the inference that many people associate its mark with itself”);
Lamberti v. Positano Ristorante, Inc., Case No. 04–04485, 2005 WL 627975, at
*6 (E.D. Pa. Mar. 16, 2005) (noting that the defendant’s minimal evidence of
modest sales, limited to his own deposition testimony, provided “a mere
‘scintilla of evidence’ that ‘Positano Ristorante’ ha[d] acquired secondary
meaning” (quoting Country Floors v. P’ship of Gepner and Ford, 930 F.2d 1056,
1061–62 (3d Cir. 1991))).
Second, plaintiff has admitted that she has been inconsistent in her use of
SILENT SKATE, seldom including trademark or registration notices and often
adding her nickname, Peachie. (Pl.’s Resp. Facts p. 3.) I agree with
defendants that plaintiff’s use of her mark and arguments here are analogous
to those made in E.T. Browne Drug Co., in which the appellant sought to
establish a secondary meaning for “Cocoa Butter Formula” even though it
always used the term “Palmer’s Cocoa Butter Formula.” 538 F.3d at 200.
The Third Circuit concluded that the record could not enable a jury to evaluate
the strength of “Cocoa Butter Formula” independently from “Palmer’s.” Id.
Additionally, “[t]hough the use of a ‘TM’ symbol on an unregistered trademark
does not conclusively establish trademark use, the use or nonuse of the ‘TM’
symbol is probative of whether a party intended to convey a message to the
public that it was asserting trademark use.” Kars 4 Kids, Inc. v. Am. Can!,
Case Nos. 14–07770 & 16–04232, 2019 WL 1755912, at *10 (D.N.J. Apr. 18,
2019) (discussing Federal Rule of Evidence 403).
Third, though plaintiff does not directly address defendants’ copying of
SILENT SKATE, she alleges that they have used a confusingly similar mark.
(Pl.’s Mot. Summ. J. p. 17.) I note that defendants acknowledge that they
learned of plaintiff and her business no later than April 2019. (Defs.’ Ex. E
p. 2.) Yet Cascade continued to host “Silent Sk8” events and Live Life
continued to pursue a trademark for SILENT SK8 into 2021. (Pl.’s Mot. Ex.
pp. 15–26, Defs.’ Ex. A pp. 26–32, 42–49.)
To the extent that these efforts may evidence an intent to copy, I find them
to be of minimal value because “intentional copying does not alone establish
secondary meaning because ‘the relevant intent is not just the intent to copy,
but to “pass off” one’s goods as those of another.’” Buzz Bee Toys, Inc. v.
Swimways Corp., 20 F. Supp. 3d 483, 502 (D.N.J. 2014) (quoting Yankee Candle
Co., Inc. v. Bridgewater Candle Co., LLC, 259 F.3d 25, 45 (1st Cir. 2001)
(applying the 11 factors to a trade-dress infringement claim)); see also Am.
Infrastructure v. Zachry Constr. Corp., No. 08–02701, 2010 WL 5464765, at *13
(E.D. Pa. Dec. 28, 2010) (“A defendant’s knowledge of a plaintiff’s mark prior to
adopting its mark is not, on its own, sufficient to find an intent to copy.”). Even
to the extent that the record supports an intent to copy by the defendants, it is
devoid of any evidence that could support a jury’s finding that defendants
sought to “pass off” their events as plaintiff’s. This is particularly so as the
parties do not dispute that defendants have held such events exclusively in
Georgia and South Carolina. (Pl.’s Resp. Facts p. 2.)
Fourth, I turn to customer surveys, customer testimony, and trade
journals. Courts place particular weight in customer surveys and testimony
because, though they “are not dispositive, they are the only direct evidence of
secondary meaning.” King of Prussia Dental Assocs., Ltd. v. King of Prussia
Dental Care, LLC, Case No. 19–01688, 2019 WL 2240492, at *12 (E.D. Pa. May
23, 2019). Here, plaintiff has provided no such evidence, weighing against a
finding that SILENT SKATE has acquired a secondary meaning. See id.
(“[T]he lack of evidence of customer surveys and customer testimony weighs
against a finding of secondary meaning.”); Com. Bancorp, Inc., 285 F. Supp. 2d
at 488 (concluding that the lack of customer surveys and testimony supported
a finding that the term did not acquire a secondary meaning in Florida).
Insofar as plaintiff cites a Courier Post article reporting on this lawsuit as
evidence of distinctiveness (Pl.’s Reply Br. p. 9), such evidence does not support
a finding that the mark acquired a secondary meaning in Georgia or South
Carolina as of November 2018. See Vista India, 501 F. Supp. 2d at 619 (finding
that newspaper and magazine articles referenced by the plaintiff did not
support its assertion that the mark acquired a secondary meaning at the time
and place that the defendant began using the mark); Com. Bancorp, Inc., 285
F. Supp. 2d at 488–89 (concluding that the plaintiff’s references to newspapers
common to the mid-Atlantic region were not probative of whether the mark
acquired a secondary meaning in Florida).
Finally, as for actual confusion, plaintiff cites a 2021 incident in which an
individual named Tyanna Lashae purchased a ticket for one of defendants’
events in Atlanta thinking that it was for one of plaintiff’s events in New Jersey.
(Pl.’s Mot. Ex. pp. 43–46.) Other examples of alleged confusion include social-
media messages plaintiff received inquiring about or notifying her of
defendants’ events. (ECF Nos. 68–1, 68–3, 68–6, 68–7, 68–8, 68–9.) At least
some of these examples do not evidence confusion and, to the contrary, appear
to be senders notifying plaintiff of events that they knew were not hers.
Further, these messages are of little probative value insofar as they were sent
by plaintiff’s friends or acquaintances. See Parks LLC v. Tyson Foods, Inc.,
863 F.3d 220, 236 (3d Cir. 2017). This leaves the Lashae emails and, perhaps,
an inquiry from “Q” asking about an event that was not plaintiff’s but also not
clearly attributed to defendants. (ECF Nos. 68–6, 68–8.) Plaintiff asserts,
without support, that “one or two basic statement[s] can … go a long way to
cause confusion.” (Pl.’s Mot. Summ. J. p. 14.) To the contrary, I find that
plaintiff’s few examples support a conclusion that SILENT SKATE has not
acquired a secondary meaning. See Parks LLC, 863 F.3d at 236 (“[T]he paucity
of proof of actual confusion suggests that the … mark lacks secondary
meaning.”).
In sum, it was plaintiff’s burden to establish that 1) her mark is valid and
legally protectable, 2) it is owned by her, and 3) defendants’ use is likely to
create confusion regarding their respective events. See Kars 4 Kids Inc., 8
F.4th at 218. While plaintiff asserts that her registration is prima facie
evidence of its validity (Pl.’s Mot. Summ. J. p. 14) that presumption does not
apply as her mark appears on the Supplemental Register, see Colur World, LLC
v. SmartHealth, Inc., Case No. 09–00505, 2010 WL 299512, at *3 (E.D. Pa. Jan.
25, 2010) (“When a mark is not registered on the Principal Register … to
establish validity and protectability, [p]laintiff must show that the mark it
seeks to protect is inherently distinctive or that it has developed secondary
meaning.”). Further, though plaintiff succeeded at the pleadings stage,
defendants raise a distinct issue here and “the whole point of the summary
judgment procedure is to go beyond the pleadings and to assess the proof in
order to determine whether there is a genuine need for a trial.” Stone v. Sec’y
U.S. Dep’t of Homeland Sec., 705 F. App’x 76, 78 (3d Cir. 2017). Because I
conclude that no reasonable jury could conclude that plaintiff’s mark is
anything more than descriptive or has acquired a secondary meaning, she has
not established that her mark is protectable and summary judgment will be
entered in defendants’ favor. See Engage Healthcare Commc’ns, LLC, 792 F.
App’x at 186 (holding that, because the mark was unenforceable, defendants
could not have infringed it).
D. Cancellation of Plaintiff’s Mark, Fees,
and Costs
Defendants close their moving brief by requesting—in addition to
summary judgment in their favor—an order directing USPTO to cancel
plaintiff’s registration and an award of attorney’s fees and costs. (Defs.’ Cross
Mot. Br. p. 32.) I decline to provide these additional forms of relief.
First, defendants’ request for fees and costs is a departure from the
“American Rule” by which each party pays its own fees. See Garza v. Citigroup
Inc., 881 F.3d 277, 281 (3d Cir. 2018).8 Courts must identify a reason for
departure before providing fees and costs contrary to this general rule. Id.
Defendants fail to support their entitlement to fees and costs and I will thus
deny their request without prejudice.
Second, a court’s “power to cancel trademarks derives solely from 15
U.S.C. § 1119.” Fenwick v. Dukhman, Case No. 13–04359, 2015 WL 1307382,
at *7 (D.N.J. Mar. 20, 2015). Defendants do not cite § 1119 and provide little
indication for the basis of their request beyond concluding the section of their
brief arguing that plaintiff’s mark is generic by stating “[s]ummary judgment
should be granted in favor of Defendants on this point alone, along with an
order to the USPTO canceling her registration.” (Defs.’ Cross Mot. Br. p. 16.)
“In any action involving a registered mark the court may … order the
cancelation of registrations ….” 15 U.S.C. § 1119. “While petitioning the
USPTO is ‘the primary means of securing a cancellation,’ district courts can
directly ‘order cancellation’ because of their ‘concurrent power’ with the
USPTO.” Hipple v. SCIX, LLC, 778 F. App’x 119, 122 (3d Cir. 2019) (quoting
Ditri v. Coldwell Banker Residential Affiliates, Inc., 954 F.2d 869, 873 (3d Cir.
1992)).
Assuming, based on the only indication provided, that defendants premise
their request for cancellation on the genericness of plaintiff’s mark, the request
is denied. This opinion does not rest on plaintiff’s mark being generic, but
rather on my conclusion that the mark is no more than descriptive and has not

8 Defendants’ request for fees and costs is also contrary to their proposed order,
which states that “each party [is] to bear its own costs and fees.” (ECF No. 191–4.)
acquired a secondary meaning. A descriptive term lacking a secondary
meaning may appear on the Supplemental Register as plaintiff’s does. See
E.T. Browne Drug Co., 538 F.3d at 202. Because I have not adopted
defendants’ argument that the mark is definitively generic and defendants
provide no clear basis or explanation for their cancellation request, I will deny
the request without prejudice.
IV. CONCLUSION
For the reasons set forth above, plaintiff’s motion will be DENIED and
defendants’ operative motion will be GRANTED. Defendants original,
substituted motion will be administratively terminated as moot. Defendants’
requests to cancel plaintiff’s registration and award attorney’s fees and costs
are denied without prejudice. An appropriate order accompanies this opinion.

/s/ Edward S. Kiel
EDWARD S. KIEL
UNITED STATES DISTRICT JUDGE
Dated: August 16, 2024

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10656450. Public record. Not legal advice.