Official Airline Guides, Inc. v. Goss

FERGUSON,

concurring and dissenting:

I join the majority’s holding that Ashby-web did not infringe OAG’s trademark over “OAG TRAVEL PLANNER” by using the phrases “The Travel Planner USA” or “USA TRAVEL PLANNER.” I dissent, however, from the majority’s conclusion that Ashby-web infringed OAG’s trademark by use of the phrase “THE TRAVEL PLANNER.”

Ashbyweb demonstrated at trial the obvious proposition that “travel planner” is a generic term, like “answering machine,” “sports car,” or “tennis shoe.” Such terms are free for all to use, standing alone, to identify their product. The majority opinion permits “[o]ne competitor ... to impoverish the language of commerce by preventing his fellows from fairly describing their own goods.” Anti-Monopoly, Inc. v. General Mills Fun Group, Inc., 684 F.2d 1316, 1319 (9th Cir.1982) (citations omitted).

The majority does not even decide whether “travel planner” is a generic term because it mistakenly believes that the issue was resolved by a previous panel and now stands as the law of the ease. See Official Airlines Guides, Inc. v. Goss, 856 F.2d 85 , 87 (9th Cir.1988) (“OAG I"). The majority misreads OAG I, seizing upon and badly misconstruing one isolated phrase in that opinion. Moreover, the majority completely ignores the fact that OAG I actually remanded to the district court for a finding on the genericness of the term “travel planner.” 1

The majority relies solely on the following sentence to support its conclusion that the previous panel held that “travel planner” is not generic:

The arrangement of letters “OAG” — as coupled with the more descriptive term. “Travel Planner” — constitutes an arbitrary mark....

Id. (emphasis added).

The majority pounces upon the phrase “the more descriptive term ‘Travel Planner’ ” as if it were a holding that “travel planner” is descriptive — and therefore not generic. The majority has misapprehended a comparative phrase indicating relative position along a spectrum as if it were categorical. ■

As the Supreme Court has explained, “[mjarks are often classified in categories of generally increasing distinctiveness.... ” Two Pesos, Inc. v. Taco Cabana, Inc., — U.S. -, -, 112 S.Ct. 2753, 2757 , 120 L.Ed.2d 615 (1992). Our circuit has “iden- *1398 tiffted] four categories of trademarks: (1) generic (or common descriptive), (2) merely descriptive, (3) suggestive, and (4) arbitrary or fanciful.” Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 718 F.2d 327, 329 (9th Cir.1983) (citations omitted), rev’d on other grounds, 469 U.S. 189 , 105 S.Ct. 658 , 83 L.Ed.2d 582 (1985).

The first two categories both involve purely descriptive terms. A generic, or common descriptive, term describes “the genus of which the particular product is a species”; a merely descriptive mark “describes the qualities or characteristics of a good or service.” Park ‘N Fly, 469 U.S. at 194 , 105 S.Ct. at 661 . In the third category are suggestive marks, which are less descriptive than the first two categories. It requires more than a small amount of imagination to make an association between a suggestive mark and the goods or services it identifies. Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215, 1218 (9th Cir.1987). Finally, an arbitrary or fanciful mark “is in no way descriptive” of the good or service. Stork Restaurant, Inc. v. Sahati 166 F.2d 348, 355 (9th Cir.1948).

OAG I held that “OAG TRAVEL PLANNER,” taken as a whole, is an arbitrary mark. The panel found that the mark, in its entirety, is in the category of arbitrary because the mark includes the completely non-descriptive “arrangement of letters ‘OAG.’ ” In construing the entire mark, the panel in passing compared its component parts: the panel noted that “Travel Planner” was more descriptive than the arbitrary letters “OAG.”

The panel, however, gave no indication whether it considered “travel planner,” standing alone, to be in the category of merely descriptive or in the category of common descriptive (i.e., generic). In no way did the panel hold that “travel planner” is in the category of descriptive and therefore not in the category of generic. 2

B

Furthermore, the prior panel could not possibly have held that “travel planner” is not generic because it remanded for the district court to determine that very issue. The district court in OAG I had found, at the preliminary injunction stage, that “travel planner” was a generic term and thus was unprotectable as a trademark. OAG I found that the district court erred in doing so; this was not because the panel held that “travel planner” wasn’t generic, but rather because the panel concluded that the district court had not yet been presented with the evidence necessary to support a finding of genericness:

The district court erred in finding the term “Travel Planner” to be generic and therefore unprotectable because Ashbyweb failed “to provide any evidence with respect to consumer perceptions.” Upon remand, the district court should consider such evidence in determining whether the term “Travel Planner” is protectable.

OAG I, 856 F.2d at 87, citing Park ‘N Fly, 718 F.2d at 330 , and California Cooler, Inc. v. Loretto Winery, Ltd., 774 F.2d 1451, 1455-56 (9th Cir.1985).

This is a clear directive to the district court to consider the relevant evidence and then determine whether “travel planner” is generic and therefore unprotectable, or whether “travel planner” is not generic and is therefore protectable. 3

II

The district court, however, did not make a finding concerning the genericness of “travel planner,” despite OAG I, and despite Ashby-web’s entreaties that it do so. The majority here also sidesteps that crucial question. Because we are not actually bound by the law of the case as to whether “travel plan *1399 ner” is generic, we must decide the issue ourselves.

The Supreme Court has imposed an onerous burden on parties such as OAG that attempt to prove that an unregistered, descriptive term such as “travel planner” is not generic. Such parties “must show that the primary significance of the term in the minds of the consuming public is not the product but the producer.” See Surgicenters, 601 F.2d at 1016 (emphasis deleted), quoting Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118 , 59 S.Ct. 109, 113 , 83 L.Ed. 73 (1938). In other words OAG must show that, to the consuming public, the primary meaning of “travel planner” is the specific product produced by OAG, rather than a generic reference to any travel guide or travel directory.

At trial, the only such evidence OAG introduced was a number of envelopes addressed to “OAG Travel Planner.” As the majority explains, the envelopes were “admitted for the limited purpose of demonstrating that consumers associate the term ‘Travel Planner’ with OAG.” See majority opinion at § II. Ashbyweb argues that the envelopes were unauthenticated and hearsay. Although they were not inadmissible hearsay because they were introduced to demonstrate state of mind, they were inadmissible as unauthenticated. OAG presented no admissible evidence whatsoever to prove that “travel planner” is not generic.

Even putting aside the issue of authentication, there is virtually no probative value in .a handful of envelopes addressed to “OAG Travel Planner”; the envelopes are woefully inadequate to prove that the primary significance of “travel planner” in the minds of the consuming public is not a travel directory, but solely OAG’s travel directory.

In contrast, Ashbyweb introduced sixty-four examples of the generic use of the term “travel planner” in magazines and newspapers, along with thirty-nine examples of “travel planners” published by various governmental agencies. Furthermore, Ashby-web introduced the testimony of five individuals from travel agencies, travel bureaus, and advertisers who all stated that they considered “travel planner” to be generic, and that they had not confused OAG’s and Ashby-web’s publications.

I do not think it can seriously be disputed that the evidence of consumer perceptions presented to the district court mandates a finding in favor of Ashbyweb that “travel planner” is generic.

Ill

Because “travel planner” is a generic term, Ashbyweb cannot logically be enjoined from use of “The Travel Planner.” In other words, even when an arbitrary mark (such as “OAG Travel Planner”) encompasses a generic term (such as “travel planner”), use of the generic term standing alone cannot constitute a trademark infringement. 4

Here, the only basis of similarity the district court found between the “OAG Travel Planner” and “The Travel Planner” was the use of the words “travel planner.” Because these words are generic and because there was no basis for finding a likelihood of confusion other than the use of these words, the district court erred in entering the injunction against Ashbyweb’s use of “The Travel Planner.”

The majority is caught in the grip of a holding that is not only obviously wrong, but that is also nonexistent. I therefore respectfully dissent.

. During the course of my numerous attempts to persuade the majority as to the folly of its ways, I proposed that we submit this dispute to binding arbitration at the hands of Judge Goodwin, author of OAG I. The members of the majority declined my offer.

. Cf. Surgicenters of America, Inc. v. Medical Dental Surgeries, Co., 601 F.2d 1011, 1016 (9th Cir.1979) (using "descriptive,” "common descriptive,” and "generic” synonymously, and summarizing a concurring opinion in a different case that found a term to be “so 'highly descriptive' ” as to be generic).

. The language of this passage, along with a cursory inspection of the case law cited therein, makes clear that OAG I remanded for a determination of genericness, not for a determination of whether "travel planner” as a descriptive term possessed secondary meaning, as the majority apparently believes. See majority opinion at § II.

. This is not to say that because Ashbyweb only used a generic term, it could not be guilty of trademark infringement. For instance, Ashby-web could be liable if it used the term "The Travel Planner" in conjunction with a logo that looked very much like that used by the "OAG Travel Planner.” See Kellogg, 305 U.S. at 119-22 , 59 S.Ct. at 113-15 .