Petition for Writ of Certiorari — Investacorp, Inc. v. Arabian Investment Banking Corp.

Bupreme Court, Us |

ole FILED

| OCT 17 1999

In the OFFIGE OF THE CLERK

Supreme Court of the United States.

October Term, 1991.

INVESTACORP, INC.,

Petitioner,

Vv.

ARABIAN INVESTMENT BANKING

CORPORATION

(INVESTCORP) E.C. D/B/A INVESTCORP

AND INVESTCORP INTERNATIONAL, INC.

Respondents.

Petition for Writ of Certiorari to

the United States Court of Appeals

for the Eleventh Circuit.

Petition for Writ of Certiorari

RICHARD S. ROSS, ESQ.

Counsel of Record

Suite 107

Senator Building

13899 Biscayne Blvd.

North Miami Beach, Fl. 33181

(305) 945-7444

October 17, 1991

No. 91-

In the

Supreme Court of the United States.

October Term, 1991.

INVESTACORP, INC.,

Petitioner,

V.

ARABIAN INVESTMENT BANKING

CORPORATION

(INVESTCORP) E.C. D/B/A INVESTCORP

AND INVESTCORP INTERNATIONAL, INC.

Respondents.

Petition for Writ of Certiorari to

the United States Court of Appeals

for the Eleventh Circuit.

Petition for Writ of Certiorari

RICHARD S. ROSS, ESQ.

Counsel of Record

Suite 107

Senator Building

13899 Biscayne Blvd.

North Miami Beach, Fl. 33181

| (305) 945-7444

October 17, 1991

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QUESTIONS PRESENTED.

1. Whether an_ evidentiary presumption of

"suggestiveness” arises from the United States Patent and

Trademark Office's decision to allow a mark to be

registered without proof of secondary meaniong.

2. Whether third party listings of portions of a mark

makes that mark "descriptive".

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Table of Contents.

Opinions Below

Jurisdiction

Statutory Provision

Statement of the Case

Argument

Evidentiary presumption of

suggestiveness

Third party use

Conclusion

Appendices

A. Memorandum and Order of Court of

Appeals, May 29, 1991

B. Memorandum of District Court,

September 5, 1989

C. Order of Court of Appeals denying

Petition for Rehearing, July 23, 1991

D. First response by PTO to application

Serial No. 644,563 ("Investcorp"),

September 17, 1987

E. Second response by PTO to application

Serial No. 644,563 ("Investcorp"),

October 13, 1987

F. First response by PTO to application

Serial No. 688,188 ("Investacorp"),

January 25, 1988

1Sa

28a

30a

32a

34a

G. Second response by PTO to application

Serial No. 688,188 ("Investacorp"),

April 13, 1988 37a

Table of Authorities cited.

Cases.

Abercrombie & Fitch Co. v. Hunting World, Inc.,

537 F.2d 4 (2d Cir. 1976). ae

Citibank N.A. v. Citibanc Group, Inc.,

724 F.2d 1540 (11th Cir. 1984) 8

Dollar-A-Day Rent-A-Car Systems, Inc, In re,

173 U.S.P.Q. 435 (T.T.A.B. 1972) 10

EZ Loader Boat Trailers, Inc. v. Cox Trailers, Inc.,

746 F.2d 375 (7th Cir. 1984) 5

Firestone Tire & Rubber Company v. The Goodyear Tire &

Rubber Company, The, 186 U.S.P.Q. 557 (T.T.A.B. 1975)

affd 189 U.S.P.Q. 348 (C.C.P.A. 1975). 8, 10

GTE Corporation v. Williams, 904 F.2d 536, 538 (10th

Cir. 1990). 4, 5, 6

Investacorp, Inc. v. Arabian Investment Banking

Corporation (Investcorp) E.C., ___ F.2d 3500 (11th Cir.

1991). 4,5, 9, i6

Investographs, Inc. v. Dynamics Investment Service, Inc.,

130 U.S.P.Q. 43 (T.T.A.B 1961) ~)

Miss Universe, Inc. v. Little Miss U.S.A., Inc., 212

U.S.P.Q. 425 (N.D. Ga. 1981) 8

ili

Money Store v. Harriscorp Fin., Inc., The, 689 F.2d 666

(7th Cir. 1982) 5

Papercutter, Inc. v. Fay's Drug Co., Inc.,

900 F.2d 558 (2d Cir. 1990) 5

Pizzeria Uno Corp. v. Temple, 747 F.2d 1522 (4th Cir.

1984) 5, 6

Playboy Enterprises, Inc. v. Chuckleberry

Publishing, Inc., 687 F.2d 563 (2d Cir. 1982) 5

Rubber Specialty, Inc. v. Sneaker Circus, Inc., 195

U.S.P.Q. 798 (S.D. Fla. 1977) 5

Safeway Stores, Inc. v. Safeway Discount Drugs, Inc.,

675 F.2d 1160 (11th Cir. 1982) 8, 10

Turner v. H.M.H. Publishing Company, Inc., 380 F.2d 224

(Sth Cir. 1967), cert. denied, 389 U.S. 1006 (1967) 8

Wynn Oil Company v. Thomas, 839 F.2d 1183 (6th Cir.

1988) 7

Yamaha Corp. of America v. Ryan, 13 U.S.P.Q.2d 1157

(C.D. Cal. 1989) 8

Statutes.

15 U.S.C. 1052(e) 2

15 U.S.C. 1125(a) 2

28 U.S.C. 1254(1) 2,11

iv

Other Authorities.

J. McCarthy, TRADEMARKS AND UNFAIR

COMPETITION (2ed. 1984) 6, 7,8

TRADEMARK MANUAL OF EXAMINING

PROCEDURE (6th rev. 1986) i1

No. 91-

In the

Supreme Court of the United States.

October Term, 1991.

INVESTACORP, INC.,

Petitioner,

Vv.

ARABIAN INVESTMENT BANKING

CORPORATION

(INVESTCORP) E.C. D/B/A INVESTCORP

AND INVESTCORP INTERNATIONAL, INC.

Respondents.

Petition for Writ of Certiorari to

the United States Court of Appeals

for the Eleventh Circuit.

OPINIONS BELOW.

The opinion of the court of appeals (A. 1a-14a) is

reported at _- F.2d 3500 (11th Cir. 5-29-91); the opinion

of the district court (A.15a-27a) is reported at 722 F. Supp.

719 (S. D. Fla. 1989). The decision of the United States

Patent and Trademark Office ("PTO") allowing the

registrability of the "Investcorp" mark (A. 30a-33a) is

identified by application Serial No. 664,563; and the

decision of the PTO on the protectability of the

"Investacorp" mark (A. 34a-37a) is identified by application

Serial No. 688,188.

JURISDICTION.

2

The decision of the court of appeals was entered on

May 29, 1991. A petition for rehearing was denied on July

23, 1991. The jurisdiction of this Court is invoked

pursuant to 28 U.S.C. 1254(1).

STATUTORY PROVISION.

The Lanham Act requires the PTO to grant

registration of marks that do not fall within certain

statutory bars enumerated in section 2 of the Act, 15

U.S.C. 1052:

No trade-mark by which the goods of the applicant

may be distinguished from the goods of others shall

be refused registration on the principal register on

account of its nature unless it--

zs s 8

(e) Consists of a mark which, (1) when used on or

in connection with the goods of the applicant is

merely descriptive....

15 U.S.C. 1052 (e) (1988).

STATEMENT OF THE CASE.

Petitioner-plaintiff, Investacorp, Inc.

("INVESTACORP"), brought suit against respondents-

defendants Arabian Investment Banking Corporation

(Investcorp, E.C.) and Investcorp International, Inc. (both

defendants referred to as "INVESTCORP") based upon

claims of service mark infringement and_ unfair

competition, among other claims. Jurisdiction was based

upon 15 U.S.C. 1125 (a). Upon cross motions for summary

judgment, the United States District Court for the

Southern District of Florida entered judgment in favor of

INVESTCORP.

a SS

3

The lower court found the service mark "Investacorp"

to be "descriptive"; protection was denied because

secondary meaning was not established. In support of this

finding, the court relied on a list of purported third party

users of the formative "invest" as probative of the

"descriptiveness" of the mark.

Upon review, the court of appeals refused to make an

evidentiary presumption that the mark was"suggestive” as

concluded by the United States Patent and Trademark

Office. The court further concluded that third party

listings of the formative "invest" makes "Investacorp"

descriptive. Thus, the appellate court affirmed the lower

court's decision.

INVESTACORP is a Florida corporation whose

primary business is providing financial services as a

broker/dealer and as an intermediary between individuals,

corporations and _ institutions seeking investment

opportunities. INVESTACORP began using its service

mark "Investacorp" in 1978 to designate the services it

performed and at all times did continue using the mark

without abandonment. There are two respondents in this

case: Investcorp E.C., the parent corporation, and its

wholly owned subsidiary, Investcorp International, Inc.

Investcorp E.C. is an investment bank headquartered in

Bahrain which began doing business in the United States

under that name in 1983.

In June of 1987, INVESTCORP filed for federal

service mark registration, Serial No. 664,563, claiming a

protectable interest in its mark "Investcorp". The United

States Patent and Trademark Office (PTO) permitted the

application to proceed to registration without proof of

secondary meaning. The PTO did not find the mark

"Investcorp” to be descriptive. It thereafter passed the

mark to publication for potential opposition to registration.

INVESTACORP opposed the registration of "Investcorp"

4

in February, 1988 based upon its prior use of the mark

"Investacorp".

Prior to the opposition, in October 1987,

INVESTACORFP filed for federal service mark registration,

Serial No. 688,188, for its mark "Investacorp". The PTO

issued an Office action refusing to register the mark based

upon the earlier filed application for the mark "Investcorp".

The PTO did not find the mark "Investacorp" to be

descriptive.

ARGUMENT.

The Eleventh Circuit Court of Appeals failed to accord

a presumption of protectability to the "Investacorp" mark.

The presumption arises from either or both of the PTO's

two actions which found the "Investacorp" and "Investcorp"

marks to be protectable without proof of secondary

meaning. The court of appeals failure is in direct conflict

with the decisions of other United States courts of appeal

regarding this issue. These courts hold that an evidentiary

presumption of "“non-descriptiveness” of a mark arises from

the PTO's decision to register the mark without proof of

secondary meaning.

"Most courts that have considered the issue do hold

that the PTO's decision to register a mark without

requiring proof of secondary meaning creates a rebuttable

presumption that the mark is suggestive, arbitrary, or

fanciful rather than merely descriptive.” GTE Corporation

v. Williams, 904 F.2d 536, 538 (10th Cir. 1990). The

Eleventh Circuit, however, held that it would "not defer to

an ethereal determination that is not affirmatively stated

by the [PTO]." Jnvestacorp, Inc. v. Arabian Investment

RRP Recut rT

5

Banking Corporation (Investcorp) E.C., _ F.2d 3500, 3506

(11th Cir. 1991). Since the PTO did not affirmatively state

that the marks "Investacorp" and "Investcorp" were not

descriptive, the court reasoned that it would not defer to

that agency's conclusion of protectability even though it

acknowledged that "it is proper to defer to any deter-

mination made by the agency ‘entrusted with the duty of

administering the Lanham Act,’...." Jd. (Emphasis Added).

The court resorted to a form-over-substance logic to

overrule the PTO's decision. This action is contrary to the

fundamental principles of law.

Five different courts of appeal, including the United

States District Court for the Southern District of Florida,

that have considered this issue have held that the PTO's

decision to register a mark without requiring proof of

secondary meaning creates a rebuttable presumption that

a mark is not merely descriptive. See, eg, GTE

Corporation, supra; Papercutter, Inc. v. Fay’s Drug Co., Inc.,

900 F.2d 558, 563 (2d Cir. 1990); Wynn Oil Company v.

Thomas, 839 F.2d 1183, 1190 (6th Cir. 1988); Pizzeria Uno

Corp. v. Temple, 747 F.2d 1522, 1528-29 (4th Cir. 1984);

Playboy Enterprises, Inc. v. Chuckieberry Publishing, Inc., 687

F.2d 563, 567 (2d Cir. 1982); The Money Store v. Harriscorp

Fin., Inc., 689 F.2d 666, 673 (7th Cir. 1982); Abercrombie

& Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 11 (2d Cir.

1976). See also Rubber Specialty, Inc. v. Sneaker Circus, Inc.,

195 U.S.P.Q. 798, 801 (S.D. Fla. 1977). But see EZ Loader

Boat Trailers, Inc. v. Cox Trailers, Inc., 746 F.2d 375, 379

(7th Cir. 1984) (conflict within the Seventh Circuit).

The Fourth Circuit has perhaps best articulated the

reasons for adopting the presumption of nondescriptive-

ness:

If thc Patent and Trademark Office finds the mark

sugg¢stive.. it will grant registration without

requiring proof of secondary meaning. The

6

significance of registration without proof of sec-

ondary meaning in this case, as it is in any similar

case, is that the Patent and Trademark Office has

"concluded" that the mark or figure was not "merely

descriptive’ ‘but suggestive’ and this “essential fact

[i.e., the action of the Patent and Trademark

Office] must be considered prima facie correct by a

court in considering the validity of a trademark, or

the prima facie evidence rule would be rendered

ineffective.

Pizzeria Uno Corp. v. Temple, 747 F.2d at 1529 (Emphasis

Added).

The fundamental conflict created by the Eleventh

Circuit's minority holding resides in its misbelief that the

PTO has the discretion to make a affirmative, recorded

finding of non-descriptiveness. It does not.

The Lanham Act requires the Patent and Trade-

mark Office to grant registration of marks that do

not fall within certain statutory bars, enumerated in

section 2 of the Act, 15 U.S.C. 1052. The Patent

and Trademark Office has the burden of proof "that

the mark sought for registration falls within the

statutory bars of section 2."

GTE Corporation v. Williams, 904 F.2d at 538 n. 2 quoting

2 J. McCarthy, TRADEMARKS AND UNFAIR

COMPETITION, Section 19:25 at 928 (2d ed. 1984).

Thus, the PTO will only make an affirmative finding of

Statutory non-compliance (i.e. that a mark. is merely

descriptive) and not statutory compliance. It is erroneous

for the court of appeals to impose a burden that is legally

impossible to prove.

Professor McCarthy, a well known commentator in the

field of trademark and service mark law, has adopted

7

appellate judicial precedent which more resolutely adheres

to the PTO's findings:

[W]here it can be argued with equal force that a

mark is descriptive and on the contrary that it is

arbitrary and fanciful, the courts should not overrule

the action of the Patent [and Trademark] Office to

whose care Congress has entrusted the preliminary

determination as to whether a mark fulfills the

requirements of the statute.

See 2 J. McCarthy, supra, Section 11:16 (citation omitted)

(Emphasis Added).

The court of appeals substituted its opinion for that of

the PTO. It overruled the PTO's decision confirming the

protectability and registrability of the marks. The decision

of the Eleventh Circuit results in federal question forum

shopping. This Court should prevent such a result.

THIRD PARTY USE

In addition to the appellate court's divergence from the

majority respecting PTO evidentiary presumptions of

suggestiveness, the court also considered third party listings

to support its finding. However, the manner in which that

court relied upon listed "third party use" mandates review.

The court of appeals found that a list of users of the

formatives "invest" and "corp" supported its conclusion that

"Investacorp" was a descriptive service mark. It further

found that competitors need to use these terms in order to

render financial services. However, it was improper for the

court to: (1) rely on a list alleged users as evidence of use;

(2) consider formatives of the mark "Investacorp" instead

of reviewing the mark in its entirety; (3) fail to consider

the type of services provided by the third parties and

whether those services were being provided under an

8

active use of the mark; (4) fail to consider whether such

use was made in a descriptive manner, and; (5) conclude

that competitors need to use formatives of the mark to

render competitive services.

First, the court relied upon a list of alleged users of the

formative "invest" to support its finding. A list of use is not

probative of actual use. See Turner v. H.M.H. Publishing

Company, Inc., 380 F.2d 224, 228 n.2 (Sth Cir. 1967) cert.

denied, 389 U.S. 1006 (1967); Miss Universe, Inc. v. Little

Miss U.S.A., Inc., 212 U.S.P.Q. 425, 429 (N.D. Ga. 1981).

See also 1 J. McCarthy, TRADEMARKS AND UNFAIR

COMPETITION, Section 11:26 (1973). The court

completely ignored this issue.

Second, by refering to only the formative "invest", the

court failed to consider the entirety of that third party

listing vis-a-vis the subject mark. INVESTACORP makes

no claim to words such as "investment" or "investor", or of

like "invest" formatives, which comprise a majority of the

listed users’ names. The appellate court did not consider

this factor.

In Safeway Stores, Inc. v. Safeway Discount Drugs, Inc.,

675 F.2d 1160 (11th Cir. 1982), the court stated that "a

consideration relevant in determining the significance of

third party use is the entire name a third party uses." /d.

at 1165. Further, though terms considered individually

may denote characteristics of a particular good or service,

it does not follow that "because the components of a

compound mark are descriptive, that the mark in its

entirety is descriptive." The Firestone Tire & Rubber

Company v. The Goodyear Tire & Rubber Company, 186

U.S.P.Q. 557, 559 (T.T.A.B. 1975) ("Biasteel" trademark)

affd 189 U.S.P.Q. 348 (C.C.P.A. 1975). See also Citibank

N.A. v. Citibanc Group, Inc., 724 F.2d 1540 (11th Cir. 1984)

("Citibank" service mark); Yamaha Corp. of America v.

Ryan, 13 U.S.P.Q.2d 1157 (C.D. Cal. 1989) ("Musicsoft"

REE Here ail -

trademark).

One need not speculate with respect to the "invest"

formative. That component of a compound mark has

previously been determined not to render the mark, in its

entirety, descriptive. In Investographs, Inc. v. Dynamics

Investment Service, Inc., 130 U.S.P.Q. 43 (T.T.A.B. 1961),

the Trademark Trial and Appeal Board concluded that the

service marks "Invest-o-gram" and “Investograph" for

investment newsletter services were protectable interests.

It found that "when considered in their entireties, [the

service marks] extend beyond the term 'invest'." Jd. at 44.

The court's failure to comment on, or at least distinguish,

this case which was presented below begs review. The

entirety of the "Investacorp” service mark is the yardstick

to judge its protection and not its component make-up.

Third, the court of appeals recognized a "handful of

businesses who use the combination of the formatives

‘invest’ and ‘corp’ in their mark," Investacorp, Inc. v.

Arabian Investment Banking Corporation (Investcorp) E.C.,

___ F.2d at 3505, to support its finding. The court,

however, failed to recognize the types of goods or services

provided by those listed users and whether or not their

listed use was active.

A review of the record suggests that the "handful" of

businesses breakdowns as follows: (1) one “Investcorp"

mark was listed as a state of Minnesota registered service

mark, however, the service provided was for construction

and repair; (2) two “Investicorp" marks were listed with no

identification of the type of goods or services provided; and

(3) one abandoned "“Investacorp" trademark application

(abandoned on March 29, 1985) was listed for computer

software goods. Again, no evidence was protfered on the

activity of use regarding these marks. Further, these uses

are wholly unrelated to the use for which either

"Investacorp" or “Investcorp" is made by these parties. The

10

type of business in which the third party use is engaged is

relevant in determining the significance of that use.

Safeway Stores, Inc. v. Safeway Discount Drugs, Inc., 675

F.2d at 1165. The court of appeals did not address this

issue.

Fourth, the appellate court did not consider if the

listed third party users used the "invest" formative in a

descriptive manner. Review of the record supports that

they did not. In fact, the record clearly supports that the

said formative was used strictly as a source identifier of the

names of the particular companies and not used in a

descriptive manner. Even the respondents use their mark

"Investcorp" as a source identifier as evidenced by their

attempt to register that mark with the PTO. Where there

is no evidence that other users have used "Investacorp” to

describe financial services, this is evidence that the term is

neither a natural nor obvious way to describe the services.

See The Firestone Tire & Rubber Company, supra,; In re

Dollar-A-Day Rent-A-Car Systems, Inc., 173 U.S.P.Q. 435

(T.T.A.B. 1972) (No descriptive use by others is a strong

argument in favor of non-descriptiveness).

Fifth, the court concluded the issue of distinctiveness

by finding that competitors "need to use [the] terms

[‘invest' and '‘corp'].". Investacorp, Inc. v. Arabian

Investment Banking Corporation (Investcorp) E.C., __ F.2d

at 3505. Even though this test is improperly based upon

formatives rather than the entirety of the mark, the finding

is unsupportable.

While "over eighty competing broker-dealers use the

word ‘invest’ in their mark,” /d., over twelve thousand other

broker-dealers do not. Furthermore, if the court's finding

were correct, then why do not some of the largest world-

wide broker-dealers use that term as part of their mark, for

example: Dean Witter Reynolds, Inc.; Goldman Sachs &

Co.; Merrill Lynch Pierce Fenner & Smith, Inc.;

1i

Painewebber; Prudential Securities; Shearson Lehman

Brothers; and Smith Barney Harris Upham & Company,

Incorporated. Clearly the competitors of INVESTACORP

do not need to use the term "invest" in their name and

neither use, nor need to use, the term "Investacorp" as part

of their mark.

CONCLUSION.

The PTO did not refuse to register either "Investacorp"

or "Investcorp" on the ground of descriptiveness. See

TRADEMARK MANUAL OF EXAMINING

PROCEDURE, Section 1209 (6th rev. 1986). See also 15

U.S.C. 1052(e)(1). Thus, the category under which those

marks must fall is “suggestive” and not "descriptive". The

appellate court's decision to substitute its opinion over that

of the PTO ignores the substance of the PTO's decisions

and directly conflicts with the majority holding of the

courts of other circuits. Not only does a presumption of

protection arise from the PTO's decisions with respect to

"Investacorp" and “Investcorp", but the respondents own

attempt to register their mark acts as an estoppel to assert

that the marks are not protectable.

Many issues of fact remain regarding third party usage.

The courts below need to address the entire "Investacorp"

mark, and services rendered thereunder, when considering

the significance of third party use. Actual use is the issue,

not listed use. The record is clear, however, that third

party use of the mark "Investacorp" for financial services is

non-existent.

12

Reversal and remand are respectfully requested.

October 17, 1991

Respectfully submitted,

RICHARD §. ROSS, ESQ.

Counsel of Record

Suite 107

Senator Building

13899 Biscayne Blvd.

North Miami Beach, Florida 33181

la

Appendix A.

United States Court of Appeals

for the Eleventh Circuit

No. 89-6060

INVESTACORP, INC.,

Plaintift-Appellant,

V.

ARABIAN INVESTMENT BANKING

CORPORATION

(INVESTCORP) E.C. D/B/A INVESTCORP

AND INVESTCORP INTERNATIONAL, INC.

Defendants-Appellees.

Before

Johnson and Hatchett, Circuit Judges,

Smith, Senior U.S. Circuit Judge.

(sitting by designation)

MEMORANDUM AND ORDER

Entered May 29, 1991

Plaintiff, Investacorp, Inc. (Investacorp), appeals the

grant of summary judgment entered in favor of defendants,

Arabian Investment Banking Corporation (Investcorp E.C.)

and Investcorp, International, Inc. (Investcorp

2a

International) on claims of service mark infringement and

unfair competition. 722 F.Supp. 719. Because the

undisputed facts show appellant does not have a

protectable interest in its claimed service mark, we affirm

the judgment of the United States District Court for the

Southern District of Florida.

Facts

Appellant, Investacorp, is a Florida corporation whose

primary business is providing financial services as a

broker/dealer and as a financial intermediary between

individuals, corporations and _ institutions seeking

investment opportunities. There are two appellees in this

case: Investcorp E.C., the parent corporation, and its

wholly owned subsidiary, Investcorp International.

Investcorp E.C. is an investment bank headquartered in

Bahrain which began doing business in the United States

under that name in 1983. Investcorp International was

created by Investcorp E.C. in November of 1986 to

continue conducting the business of its parent in the

United States. Hereinafter, the two co-appellees will be

referred to as "Investcorp".

Investcorp filed for federal service mark registration in

June of 1987. The Patent and Trademark Office (PTO)

allowed the Investcorp service mark to pass for potential

opposition to registration. Four months later, in October

1987, Investacorp filed for federal service mark

registration. In February, 1988, Investacorp filed a Notice

of Opposition with the Trademark Trial and Appeal Board

of the PTO, opposing registration of the Investcorp service

mark.

Later in 1988, Investacorp sued Investcorp on several

counts of service mark infringement and_ unfair

competition. The district court granted summary judgment

in favor of defendant on all counts of the complaint,

3a

because it determined that plaintiff does not have a

proprietary interest in the mark "Investacorp". Plaintiff

appeals to this Court asserting that genuine issues of

material fact are involved in the trial court's summary

resolution of the claims.

Issues

We must determine whether the district court's finding

involved the resolution of an issue of material faci. As an

appellate court, we must also determine the applicable law,

independent of that interpretation rendered by the district

court. If no issue of material fact was presented and the

independently determined applicable law supports the

grant of summary judgment ordered by the district court,

then we must affirm.’

Opinion

Plaintiff, Investacorp, alleges that defendants,

Investcorp, unfairly competed by infringing on plaintiff's

unregistered service mark. Appellant asserts that the

district court should have found genuine issues of material

fact presented in the following counts: Federal service

mark infringement,” Florida common law service mark

infringement, Florida common law unfair competition, and

violation of the Florida anti-dilution law.’ As the parties

do in their briefs, we evaluate the federal service mark

infringement claim as a measuring stick for the whole host

of claims that appellant asserts. If the federal service mark

claim fails in this case for the reason cited by the district

court, that plaintiff had no proprietary interest in the

' Fed.R.Civ.P. 56(c).

2 Lanham Act Section 43(a), 15 U.S.C. Section 1125(a) (1988).

> Fla. Stat. Ann. Section 495.151 (West 1988).

4a

"Investacorp" mark, then all of appellant's claims will fail.

Prima Facie Service Mark Infringement

To prove service mark infringement in this case, plaintiff

must prove (1) that defendant used a term in commerce

(2) in connection with their services (3) which is likely to

be confused with the term (4) in which plaintiff possesses

the right to use to designate their services.‘ Appellee

concedes that elements (1) and (2) are present. The district

court, however, found that plaintiff did not own the right

to designate its service with the term "Investacorp" and

hence had no protectable interest that could be infringed.

Consequently, summary judgment was entered for

defendant.

In order for defendant to infringe on plaintiff's mark,

plaintiff must have a protectable property interest in the

mark "Investacorp".” Ordinarily, such an interest is derived

when a business uses a mark to represent its services.°

Each time a business uses a mark, it enhances the

customer recognition of the mark and its association with

the service, thereby inuring to the business greater rights

in the mark.’ However, a business does not automatically

obtain rights in a mark by using it. A business will obtain

rights in a mark upon first use only if the mark is

* Lanham Act Section 43(a), 15 U.S.C. Section 1125(a) (1988).

° American Television & Communications Corp. v. American

Communications & Television, Inc., 810 F.2d 1546, 1548, 1 U.S.P.0.2d

2084, 2085 (11th Cir. 1987).

. 1 J. McCarthy, TRADEMARKS AND UNFAIR

COMPETITION Section 16:1 (2d ed. 1984).

ae

oe

Sa

"inherently distinctive.” If the mark is not inherently

distictive, a business may obtain rights in the mark when it

attains a secondary meaning.’ Therefore, to determine if

and when plaintiff obtained rights in the mark "Investa-

corp," we must determine if the mark "Investacorp" is

inherently distinctive.

The Categories of Distinctiveness

There are four categories of distinctiveness in which a

service mark may be classified.'” In ascending order they

are: (1) Generic; (2) descriptive; (3) suggestive; and (4)

arbitrary or fanciful.'’ The demarcation between each

category is more blurred than it is definite.’* A term

which suggests the basic nature of the service is generic.’

The term "Milk Delivery" is an example of a generic

service mark for a hypothetical milk delivery service.* A

generic term is typically incapable of achieving service

mark protection because it has no distinctiveness. A

® Id. at Section 16:2.

a

10 American Television, 810 F.2d at 1548, 1 U.S.P.Q.2d at 2085.

we

"2 Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1183, 207 U.S.P.Q.

278, 282 (Sth Cir. 1980), cert. denied, 450 U.S. 981, 101 S.Ct. 1516, 67

L.Ed.2d 816 (1981).

3 American Television, 810 F.2d at 1548, 1 U.S.P.Q.2d at 2086.

4 The examples given in this paragraph are believed to be

hypothetical service marks for a fictional milk delivery service. The

examples are given strictly for pedagogical reasons and have no legal

effect.

'S American Television, 810 F.2d at 1548, 1 U.S.P.Q.2d at 2086.

6a

descriptive term merely identifies a characteristic or quality

of a service."© An example of a descriptive service mark

might be "BarnMilk.” Because a descriptive service mark

is not inherently distinctive, it may be protected only if it

acquires a secondary meaning.'’ The personal name

component of a service mark such as "Barney's" to denote

a milk delivery service is also considered not inherently

distinctive and hence merely descriptive."* However, if the

personal name mark acquires secondary meaning, it is

afforded the strength of an inherently distinctive mark.’

Marks which are descriptive of geographic location of the

source of the service are treated in the same manner as

personal name marks.” A suggestive term suggests the

characteristics of the service "and requires an effort of the

imagination by the consumer in order to be understood as

descriptive" of the service.”’ "Barn-Barn" is an example of

a suggestive term. Because a suggestive service mark is

inherently distinctive, no proof of secondary meaning is

required for it to be protectable.” "An arbitrary or

fanciful [term] bears no relationship to the service."~

Arbitrary and fanciful terms are also inherently distinctive,

so they are protectable without proof of secondary

meaning. "Barnbarnfish" is an example of an arbitrary or

* &

- 2

© J. MCCARTHY, supra note 6, Section 13:2.

7

20 Id. at Section 14:1.

21 American Television, 810 F.2d at 1549, 1 U.S.P.Q.2d at 2086.

oe.

23 Id.

eens

Ta

fanciful service mark.

Distinctiveness Inquiry

The district court determined that the term "Investacorp"

was descriptive. Because the distinctiveness categorization

given a term is a question of fact,“ we must determine

whether the district court's finding involved a genuine issue

of material fact.”

Investacorp is a corporation in the business of advising

their customers in corporate investment opportunities.

Pursuant to a customer's desires, Investacorp sells stocks,

bonds and other securities which are often initially issued

by corporations. The two key formatives in the term

"Investacorp" are "invest" and "corp". "Invest" is the verb " to

commit (money) in order to earn a financial return,"

and "corp" is the widespread abbreviation for a

corporation. It is beyond doubt that the term "Investacorp"

bears a relationship to the type of services being offered by

plaintiff. Hence, it cannot be an an arbitrary or fanciful

term.”” The only two categories remaining that are

eligible for service mark protection are the descriptive and

suggestive categories. Thus, we must determine whether

the mark is descriptive or suggestive.

To determine whether a term is descriptive, third party

24 Soweco, 617 F.2d at 1183 n. 12, 207 U.S.P.Q. at 282 n. 12.

2 Fed. R. Civ. P. 56(c).

*° WEBSTER'S NEW COLLEGIATE DICTIONARY, 603 (1979).

“” See J. MCCARTHY, supra note 6, Section 11:2.

8a

usage by competitors is probative.” We reject appellant's

argument that third party usage is not relevant to the

distinctiveness inquiry because there is a plethora of

authority embracing the relevancy of third party usage.”

The likelihood of prospective use by competitors is high.

Both of the two formatives "invest" and "corp" pervade the

lexicon of business terminology. Because the two

formatives are indispensable to the investment services

industry, we agree that it is very likely that competitors will

need to use these terms.

Moreover, the popularity of actual use of the two ke ey

formatives also indicates that the mark is descriptive.

Over eighty competing broker-dealers use the word "invest"

in their mark, and there are a handful of businesses who

use some combination of the formatives "invest" and "corp"

in their mark. We find the popularity of use by competitors

is extreme.

Also probative of the descriptiveness of a mark is the

idea that is conveyed to the observer by the plain

dictionary definition of the formatives comprising the

mark.*! In this case, the two formatives combined in the

8 Vision Center v. Opticks, Inc., 596 F.2d 111, 116, 202 U.S.P.Q.

333,338 (Sth Cir. 1979), cert. denied, 444 U.S. 1016 100 S.Ct. 668, 62

L.Ed.2d 646 (1980).

29 In re Bongrain Int'l Corp., 894 F.2d 1316, 1317 13 U.S.P.Q.2d

1727, 1728 (Fed. Cir. 1990); Burke-ParsonsBowlby Corp. v. Appalachian

Log Homes, Inc., 871 F.2d 590, 593, 10 U.S.P.Q.2d 1443, 1445 (6th Cir.

1989); Security Center, Ltd. v. First Nat'l Security Centers, 750 F.2d 1295,

1298-1299, 225 U.S.P.Q. 373, 375-76 (Sth Cir. 1985); Telemed Corp.

Tel-Med, Inc., 588 F.2d 213, 218, 200 U.S.P.Q. 427 432 (7th Cir. 1978).

%© Vision Center, 596 F.2d at 117, 202 U.S.P.Q. at 339.

31 Id. at 116, 202 U.S.P.O. at 338.

9a

term "Investacorp" literally convey to the observer that

appellant is in the business of investing in corporations.

Because the customer who observes the term can readily

perceive the nature of plaintiff's services, without having to

exercise his imagination, the term cannot be considered a

suggestive term.” The only remaining categorization that

is eligible for protection is the descriptive category.

Accordingly, "Investacorp"” must be merely descriptive.

Plaintiff relies on the inaction of the Patent and

Trademark Office to inject an issue of fact into the district

court's determination of distinctiveness. When the

defendant submitted the "Investcorp" mark application, the

PTO passed the mark on to publication. Because a finding

of descriptiveness is one of the grounds for refusal of

registration, appellant argues that the PTO must have

decided that "Investcorp" was not merely descriptive;

otherwise, the PTO would not have passed the mark on to

publication according to Section 1209 of the

TRADEMARK MANUAL OF EXAMINING

PROCEDURE.” Moreover, appellant notes, the PTO

opted to reject plaintiff's subsequent application to register

"Investacorp” because the similar "Investcorp" application

was pending, instead of on the ground that it was merely

descriptive. Plaintiff argues that this indicated that the

PTO found the similar mark also not descriptive.

Plaintiff asserts that these two facts negatively imply that

the PTO found that both marks, "Investacorp" and

"Investcorp," were not merely descriptive. Consequently,

because it is proper to defer to any determination made by

the agency "entrusted with the duty of administering the

Lanham Act," appellant argues that we must accept the

= i.

33 (6th rev. 1986).

10a

determination made by the PTO in accord with Wynn Oil

Co. v. Thomas.

The soft spot in appellant's argument is that there is no

recorded finding by the PTO that either service mark was

not descriptive. Consequently, all that this Court can do is

guess at what the PTO's determinations were while

evaluating the merit of each mark. We do not know

whether the PTO even considered the descriptiveness of

either mark. Although we will bestow proper respect to the

determinations of the PTO, we will not defer to an

ethereal determination that is not affirmatively stated by

the administrative agency. Therefore, withstanding the

implications that appellant points out, the finding that

"Investacorp" is merely descriptive involved no genuine

issue of material fact. Consequently, in heeding the

proposition that the descriptiveness category encompasses

a broad range,” the term “Investacorp" is merely

descriptive and hence is not inherently distinctive.

Secondary Meaning

Because the term is not inherently distinctive, for

appellant to have a protectable interest in the term

"Investacorp,” it must have attained secondary meaning

before the date that appellee used the similar term

"Investcorp".” The district court determined that the term

“Investacorp" did not attain secondary meaning by the time

appellees first used it. Because the existence of secondary

% 839 F.2d 1183, 1190, 5 U.S.P.Q.2d 1944, 1949 (6th Cir. 1988).

% Vision Center, 596 F.2d at 116, 202 U.S.P.Q. at 338.

© (Co-Rect Products, Inc. v. Marvy! Advertising Photography, Inc., 780

F.2d 1324, 1330, 228 U.S.P.Q. 429, 431 (8th Cir. 1985).

lla

meaning is a question of fact,” we determine whether

this determination required the resolution of a genuine

factual issue.

Because secondary meaning must attach to the mark

before appellee first used the mark, we must determine the

date that appellee first used the mark "Investcorp". The

district court decided that appellee first used the mark in

March of 1983. Appeilant disputes this finding by pointing

out certain facts. Investcorp E.C. first began using the

service mark in March of 1983. In June of 1987, Investcorp

E.C. created a subsidiary entitled Investcorp International

to be responsible for conducting all of Investcorp's business

in the United States. Investcorp E.C., the parent, licensed

to Investcorp International the right to use the "Investcorp"

service mark in the United States.

Appellant asserts that because the parent, Investcorp

E.C., intended not to use the mark in the United States, it

had abandoned the use of the mark. The argument goes

that the previous use by the parent corporation between

1983 and 1987 does not count because it had abandoned

the mark. Hence, appellant argues that appellee's first use

did not occur until 1987, when the subsidiary, Investcorp

International, first began using the mark in the United

States.

To establish abandonment, appellant must prove (1)

nonuse and (2) intent not to resume use.” Appellant's

37 Aloe Creme Laboratories, Inc. v. Milsan, Inc., 423 F.2d 845, 849,

165 U.S.P.Q. 37, 41 (Sth Cir.) cert. denied, 398 U.S. 928, 90 S.Ct. 1818,

26 L.Ed.2d 90 reh'g denied, 400 U.S. 856, 91 S.Ct. 23, 27 L.Ed.2d 95

(1970).

3° E. Remy Martin & Co., S.A. v. Shaw-Ross Intemational Imports,

Inc., 796 F.2d 1525, 1532, 225 U.S.P.Q. 1131, 1136 reh'g denied, en banc,

765 F.2d 154 (11th Cir. 1985).

12a

argument is disingenuous because although Investcorp E.C.

did not intend to use the mark in the United States, it

intended Investcorp International, its wholly-owned

subsidiary, to continue the use of the mark in its place. All

that occurred was a reorganization of Investcorp's

Structure; the intent was for Investcorp to continue to use

the mark through its subsidiary, Investcorp International.

Therefore, Investcorp never intended to cease using the

"Investcorp" mark and there was no abandonment. Thus,

Investcorp's first use of their mark occurred in March of

1983, and the secondary meaning of "Investacorp" must

attach by that date.

Secondary meaning is the connection in the consumer's

mind between the mark and the provider of the service.”

Plaintiff has the burden of sustaining a high degree of

proof in establishing a secondary meaning for a descriptive

term.” This requisite high degree of proof must be

considered by the court when ruling on a motion for

summary judgment.’ Absent consumer survey evidence,

as is the case here, four factors can be considered in

determining whether a particular mark has acquired a

secondary meaning:

(1)[T]he length and manner of its use; (2) the

nature and extent of advertising and promotion; (3)

the efforts made by the plaintiff to promote a

conscious connection in the public's mind between

the name and the plaintiff's ... business; and (4) the

extent to which the public actually identifies the

39 AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1536 n. 14, 1

U.S.P.Q.2d 1161 (11th Cir. 1986).

“© Vision Center, 596 F.2d at 119, 202 U.S.P.Q. at 341.

*) Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S.Ct. 2505, 91

L.Ed.2d 202 (1986). ‘

13a

name with the plaintiff's [service.}”

Appellant began designating their services with the

"Investacorp" mark in January of 1978. Thus, the length of

appellant's use of the mark was five years prior to the

appellee's use of their mark. However, there is nothing

significant about the manner of appellant's use of the

mark, other than appellant merely “displayed its service

mark on nearly all of its transactional documents."

The nature and extent of appellant's advertisement and

promotion and its achievement of a conscious connection

in the public's mind between the mark and the appellant's

business during the relevant time period is far short of

spectacular. During this period, appellant's advertising

expenditures did not exceed one-hundred dollars per

month. Although, appellant emphasizes growth and showed

a high ratio of sales dollars to advertising dollars during

the relevant period, this fact does not indicate that

appellant's bantam advertising campaigns made major

inroads to the consumer psyche.

The evidence that the public actually identifies the mark

with appellant's business is also lacking. Although instances

of consumer confusion are probative of secondary

meaning,” the few isolated instances cited by appellant

are not adequate to present a genuine issue of material

fact. Consequently, we agree that the undisputed facts

show that the mark "Investacorp" did not acquire secondary

meaning before the end of the relevant time period.

Conclusion

‘2 Conagra, Inc. v. Singleton, 743 F.2d 1508, 1513, 224 U.S.P.Q. 552,

555 (11th Cir. 1984).

“8 McCarthy, supra note 6, Section 15:3.

l4a

In order to prove all of its claims, appellant must

establish ownership of the right to use the mark to

designate its services. Because the undisputed facts show

that the "Investacorp" mark is not inherently distinctive, a

protectable interest does not attach until the mark acquires

a secondary meaning. The district court found that the

undisputed facts established that “Investacorp" did not

acquire secondary meaning before appellee commenced

use of their similar service mark, "Investcorp". Therefore,

appellant does not own a protectable interest in the

"Investacorp" service mark. We agree with the district

court's view of the evidence. Accordingly, as a matter of

law, appellee did not infringe on the appellant's service

mark or unfairly compete with appellant because appellant

never owned a protectable interest in the mark,

"Investacorp", and appellee is entitled to judgment.

Affirmed.

1Sa

Appendix B.

United States District Court

Southern District of Florida

CASE NO. 88-1962-CIV-SCOTT

INVESTACORP, INC.,

Plaintiff,

_-

ARABIAN INVESTMENT BANKING

CORPORATION (INVESTCORP) E.C.,

et.al.,

Defendants.

MEMORANDUM OPINION ON MOTIONS

FOR SUMMARY JUDGMENT

Plaintiff, Investacorp, Inc. ("Investacorp"), instituted this

action against Defendants, Arabian Investment Banking

Corporation (Investcorp) E.C. ("Investcorp E.C.") and

Investcorp International, Inc. ("Investcorp International"),

claiming: (1) service mark infringement under section 43

of the Lanham Act, 15 U.S.C. Section 1125(a) (Count I);

(2) federal common law unfair competition (Count II); (3)

federal common law service mark infringement (Count

III); (4) Florida common law service mark infringement

(Count IV); (5) Florida common law unfair competition

(Count V); and (6) violation of the Florida anti-dilution

statute, Fla. Stat. Section 495.151 (Count VI). The case is

before the Court on cross motions for summary judgment

filed pursuant to Rule 56 of the Federal Rules of Civil

Procedure.

I. Background

16a

Plaintiff Investacorp is a Florida corporation whose

primary business is that of a financial services company

providing services as a broker/dealer and as a financial

intermediary between individuals, corporations and

institutions seeking investment opportunities through a

nationwide network of licensed registered representatives.

Defendant Investcorp E.C. is an investment bank

headquartered in Manama, Bahrain. It provides investment

and advisory services in real estate, direct investment,

portfolio investment, treasury and regional banking

investment activities for a broad range of investors

throughout the Gulf region. Defendant Investcorp

International is a wholly-owned subsidiary of Investcorp

E.C. and is headquartered in New York.

In June 1987, Investcorp E.C. filed an application for

federal registration of the "Investcorp" mark. Four months

later, in October 1987, Investacorp sought registration of _

its mark "Investacorp", and in February, 1988 filed a Notice

of Objection to Investcorp E.C.'s registration request.’

This suit followed.

On the eve of trial and with discovery completed, both

plaintiff and defendants moved for summary judgment.

Plaintiff has moved for partial summary judgment as to its

claims for service mark infringement. Simultaneously,

Defendants have moved for an order granting summary

judgment in their favor as to all claims asserted against

them. The Court heard oral argument on these motions on

August 29, 1989.

II. Legal Standard

Summary judgment is proper "if the pleadings,

1 Proceedings regarding the parties’ registration applications have been

stayed pending resolution of this case.

17a

\

depositions, answers to interrogatories, and admissions on

file, together with the affidavits, if any, show that there is

no genuine issue as to any material fact and that the

moving party is entitled to a judgment as a matter of law."

Fed. R. Civ. P. 56(c). The burden is on the moving party

to demonstrate the absence of a genuine issue as to any

material fact. Kciser v. Coliseum Properties, Inc., 614 F.2d

406 (Sth Cir. 1980). This burden "may be discharged by

showing -- that is, pointing out to the District Court -- that

there is an absence of evidence to support the nenmoving

party's case." Celotex Corp. v. Catrett, 477 U.S. 317, 106

S.Ct. 2548, 2554, 91 L.Ed.2d 265 (1986). The burden then

shifts to the nonmoving party to "go beyond the pleadings

and . . . designate ‘specific facts showing that there is a

genuine issue for trial.” Celotex, 106 S.Ct. at 2253, citing

Fed.R.Civ.P. 56(e). Assuming there has been adequate

time for discovery, summary judgment should then be

entered against "a party who fails to make a showing

sufficient to establish the existence of an essential element

to that party's case, and on which that party will bear the

burden of proof at trial.” Jd.

III. Analysis

A. Plaintiff's claims for Federal Common Law of Unfair

Competition and Service Mark Infringement.

Initially, defendants argue that the federal common law

claims of unfair competition and service mark infringement

asserted by plaintiff in Counts II and III of the amended

complaint do not state a claim and should be dismissed

because no such common law exists. Although plaintiff

contends that there in fact exists a federal common law of

service mark infringement and unfair competition, it has

not cited a single post-Erie case sustaining a claim for

federal common law service mark infringement of|sic]

unfair competition, and the Court's independent research

18a

did not reveal any.”

A dual system of federal and state law provide[sic] the

legal grounds for service mark protection. At the federal

level, the Lanham Act applies, and at the state level, both

the common law of unfair competition and a network of

Statutory laws apply. Gilson, TRADEMARK

PROCEDURE AND PRACTICE, Volume 1, Section 1.04.

Thus, while infringement of a federally unregistered

trademark may give rise to causes of action under (a)

Section 43(a) for federal unfair competition, (b) state

unfair competition common law, and (c) a state statute, it

does not give rise to causes of action for either federal

common law unfair competition or service mark

infringement. In sum, federal common law does not serve

as a basis for service mark protection, and any

development of such a body of law was arrested by Erie

Railroad Co. v. Tompkins, 304 U.S. 64, 58 S.Ct. 817, 82

L.Ed. 1188 (1938). Jd. at Section 7.01[1]. See also Skil

Corporation v. Rockwell Int'l. Corp., 375 F.Supp. 777, 782

(N.D. Ill. 1974) (In enacting Section 43(a) of the Lanham

Act, "Congress undoubtedly recognized and intended to

remedy the destructive effect that Erie had upon the

development of a uniform federal common law of unfair

competition... ."). Counts II and III of plaintiff's amended

complaint must therefore be dismissed and summary

judgment entered in favor of defendants as to those two

counts.

B. Plaintiff's Claim Under the Lanham Act and its Florida

Common Law and Statutory Claims.

2 At oral argument, plaintiff cited Keebler Co. v. Rovira Biscuit

Corp., 624 F.2d 366 (1st Cir. 1980) and Jn re Sawyer Electrical Mfg. Co.,

144 F.2d 893 (C.C.P.A. 1944) in support of its position. Those cases,

however, do not stand for the proposition that the federal common law

of trademarks and unfair competition developed prior to the Supreme

Court's decision in Erie applies today.

19a

The remainder of plaintiff's amended complaint consists

of claims under Section 43(a) of the Lanham Act, 15

U.S.C. Section 1125{a), Florida's common law of

trademark infringement and unfair competition, and

Florida's anti-dilution statute, Fla. Stat. Section 495.151. To

establish these claims, plaintiff must prove a protectible

interest in the mark allegedly infringed.’ American

Television & Communications Corp. v. American

Communications & Television, Inc., 810 F.2d 1546, 1548

(11th Cir. 1987); Creamette Co. v. Conlin, 191 F.2d 108,

111-12, (Sth Cir. 1951), cert. denied, 342 U.S. 945 (1952)

(applying Florida law); Abner's Beef House Corp. v. Abner's

Int'L, Inc., 227 So.2d 865, 867 (Fla. 1969); American Bank

v. First American Bank & Trust, 455 So.2d 433, 445-46 (Fla.

5th DCA 1984); Marks v. Cayo Hueso, Ltd., 437 So.2d 775,

777 (Fla. 3d DCA 1983).

1. Categorizing the Mark.

To ascertain whether plaintiff has a protectible property

right in the term "Investacorp", the Court must first

categorize it. The cases have identified four categories of

terms with respect to service mark protection: (1) generic;

(2) descriptive; (3) suggestive; or (4) arbitrary or fanciful.

These categories indicate different levels of protectability.

> To prove a protectible interest, plaintiff must establish that (i) it

actually used the mark "Investacorp” before the defendants began using

the “Investcorp” mark, and (ii) the “Investacorp" mark is either

inherently distinctive or had acquired a secondary meaning prior to the

date on which defendants commenced using the same or similar mark.”

Co-Rect Products, Inc. v. Marvy! Advertising Photography, Inc., 780 F.2d

1324, 1330 (8th Cir. 1985); Scott Paper Co. v. Scott's Liquid Gold, Inc.,

589 F.2d 1225, 1231 (3d Cir. 1978); Abner’s Beef House Corp. v. Abner’s

International Inc., 227 So.2d 865 (Fla. 1969). Defendants concede that

plaintiff used the mark “Investacorp" before they began using the

"Investcorp” mark.

20a

They are summarized as follows in American Television and

Communications Corp. v. American Communications and

Television, Inc., 810 F.2d 1546, 1548-49 (11th Cir. 1987)

(citations omitted):

A generic name suggests the basic nature of the

article or service. Most courts hold that a generic

term is incapable of achieving trade name

protection. A descriptive term identifies a

characteristic or quality of an article or service, and

may become a protectible trade name only if it

acquires a secondary meaning. The distinction

between descriptive and generic terms is one of

degree. A suggestive term suggests, rather than

describes, a characteristic of the goods or services

and requires an effort of the imagination by the

consumer in order to be understood as descriptive;

it requires no proof of secondary meaning to be

protectible. An arbitrary or fanciful name bears no

relationship to the product or service and is also

protectible without proof of secondary meaning.

Defendants assert that the plaintiff cannot establish a

protectible interest in the mark allegedly infringed because

the term "Investacorp" falls into the descriptive category of

terms with respect to legally protectible interests. This

requires plaintiff to establish a secondary meaning to the

term in order to establish a protectible interest. Plaintiff

argues that "Investacorp” is not a descriptive term but an

arbitrary or, at least, a suggestive term for which no

showing of secondary meaning is necessary.

In determining the mark's status, the Court rejects

outright plaintiff's contention that the term “Investacorp"

is an arbitrary term. Unlike such marks as EXXON,

KODAK, SHELL, CAMEL, and DREFT, which are

meaningless in relation to the products, the term

"Investacorp” bears a relationship to the service being

2ila

offered by plaintiff. The oily real issue, therefore, is

whether "Investacorp" is a désctiptive or suggestive term.

The Court concludes that the term "Investacorp" is a

descriptive term. Without thé use of imagination, the term

forthwith describes the esserace of plaintiff's business and

conveys to the unknowing 4n immediate idea of the

services being offered by plaintiff. "Because the name does

not require ‘imagination, thought and perception to reach

a conclusion as to the naturé Of the goods' or services, it

cannot be considered a suggestive term." Vision Center v.

Optick, Inc., 596 F.2d 111,116 (Sth Cir. 1979) (citing Stix

Products, Inc. v. United Merchants & Mfrs., Inc., 295 F.Supp.

479, 488 (S.D.N.Y. 1968)).

Another test used by the Courts in determining the

descriptiveness of a mark is the extent to which those

engaged in similar businesses have used the phrase. Vision

Center, 596 F.2d at 117. Here, over eighty listed

NASD-registered broker-dealers use the term "invest" in

their names. Additionally, thé T & T Trademark Research

Report submitted by defendants reveals an "Investcorp" in

Minnesota, an "Investcorp & Associates" in Dallas, an

"Investicorp" in New York and Chicago and another

company that sought to register "Investacorp" before the

plaintiff did. These facts furth¢r support the descriptiveness

of plaintiffs mark. See Visiort Center, 596 F.2d at 117 &

n.15 (the court considered thiat the name "Vision Center"

had been adopted by a largé number of optical stores in

other parts of the nation jin finding that name to be

descriptive); Telemed Corp. v: Tel-Med, Inc., 588 F.2d 213,

218 (7th Cir. 1978) (court considered that the terms "tel"

and "med" likely to form part of trademark use by

competitors, and 254 business names began with the prefix

"Tel" or “Tele” in the Manhattan Telephone Directory);

American Heritage Life Insurance Co. v. Heritage Life Ins.

Co., 494 F.2d 3, 11 (Sth Cir. 1974) (court considered that

the word "heritage" is used in the corporate names of

22a

insurance companies all over the country in finding that

term to be descriptive). These facts further support the

Court's conclusion that "Investacorp" is a descriptive term.

2. Is there sufficient evidence of secondary meaning?

Although the mark "Investacorp" is descriptive, it may

rise to the level of protectability if shown to have acquired

a secondary meaning "prior to the date on which the

defendant[s] commenced using the same or similar mark."

Co-Rect Products, Inc. v. Marvy! Advertising Photography,

Inc., 780 F.2d 1324, 1330 (8th Cir. 1985). To establish that

its mark has acquired a secondary meaning, plaintiff must

show that the consuming public connects the mark with

plaintiff rather than the services offered. American

Television, 810 F.2d at 1549. Only where the plaintiff can

show that “the corporate name denotes to the consumer or

purchaser ‘a single thing coming from a single source” can

a secondary meaning be shown. American Television, 810

F.2d at 1549; American Heritage, 494 F.2d at 12; Aloe

Creme Laboratories, Inc. v. Milsan, Inc., 423 F.2d 845, 850

(Sth Cir.), cert. denied, 398 U.S. 928 (1970). The intentions

or desires of the creator of the mark or its owner are

irrelevant; the consumer's state of mind is paramount.

Co-Rect Products, 790 F.2d at 1330.

The Eleventh Circuit in Congra, Inc. v. Singleton, 743

F.2d 1508, 1513 (11th Cir. 1984) identified four types of

evidence that are considered in ascertaining whether

secondary meaning has attached to a mark: (1) the length

and manner of the mark's use; (2) the nature and extent of

advertising, promotion and sale; (3) the plaintiff's efforts

to promote a conscious connection in the public's mind

between the name and the plaintiff's product or business;

and (4) the extent to which the public actually identifies

23a

the name with the plaintiffs product or venture.’ To

establish secondary meaning for a descriptive term, "a high

degree of proof is necessary." American Television, 810 F.2d

at 1549 (citing Vision Center, 596 F.2d at 118 and American

Heritage Life Ins. Co. v. Heritage Life Ins. Co., 494 F.2d 3,

12 (Sth Cir. 1974)). This high standard of proof must be

considered by the Court on the parties’ motions for

summary judgment. See Anderson v. Liberty Lobby, Inc.,

477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

In evaluating a claim of secondary meaning, consumer

surveys are recognized as the most direct and persuasive

evidence of secondary meaning. See, e.g., Vision Center, 596

F.2d at 119 ("In assessing a claim of secondary meaning,

the chief inquiry is the attitude of the consumer toward the

mark; does it denote to him a ‘single thing coming from a

single source’? Short of a survey, this is difficult of direct

proof.") (quoting Aloe Creme Laboratories, inc. v. Milsan,

Inc., 423 F.2d 845 (Sth Cir. 1970)). During oral argument,

plaintiff conceded that here there is no evidence involving

an objective survey of the public's perception of the name

"Investacorp."® Instead, the only evidence offered to show

secondary meaning was the extent of plaintiff's advertising

and the growth of its sales.°

* The relevant time period for determining the secondary meaning

factor here is 1983, the date defendants first used the mark "Investcorp”

in the United States. See Scott Paper, 589 F.2d at 1231; Chase Federal

Savings & Loan Assoc., 681 F.Supp. 771, 779 (S.D. Fla. 1987).

> This lack of evidence alone is a “significant hindrance to meeting

the standard of proof required.” Security Centers, Ltd. v. First National

Security Centers, 750 F.2d 1295, 1301 (Sth Cir. 1985) (citing Vision

Center, 596 F.2d at 119).

© Prior to oral argument, plaintiff failed to point out to the Court

in its summary judgment memoranda any evidence of secondary

meaning. Instead, plaintiff precariously chose to merely assert that

"Investacorp” is not a descriptive term and that even if the term

24a

The amended complaint establishes that in the years

1977 through October, 1983, plaintiff spent a total of

$4,323 in advertising. Plaintiff's estimated volume of sales

grew from $74,825 in October 1978 to more that $27

million in October 1983.

In considering plaintiffs evidence of advertising

expenditures, the Court emphasizes that "it is not the

amount of money spent on advertising that is important,

but the results achieved with the money spent." Bank of

Texas v. Commerce Southwest, Inc., 741 F.2d 785, 788 (Sth

Cir. 1984) (citing Aloe Creme Laboratories, Inc. v. Milsan,

Inc., 423 F.2d 845, 850 (Sth Cir. 1970). Here, there is

insufficient evidence that the purchasing public has come

to link the term "Investacorp" with plaintiff. Other than its

own speculation, plaintiff presented no evidence of the

meaning of its name to any investors. There is no

testimony of any consumers that "Investacorp" means the

plaintiffs business to them. Given this record, the Court

cannot conclude that plaintiff's evidence of advertising is

sufficient to establish that its promotional efforts were

successful in altering the meaning of "Investacorp" to the

consuming public.

As to the growth of plaintiff's sales, the Court finds the

same weakness as it did with the proffered evidence of

advertising. More is needed to establish the necessary

consumer association than the mere proof of sales and

growth under the mark "Investacorp" because such proof

only measures plaintiffs effort to establish secondary

meaning - - it does not determine its success. There must

also be evidence that the public associates the name

"Investacorp" with plaintiff. See American Television, 810

"Investacorp” is descriptive, it is entitled to a trial to prove that the term

has acquired a secondary meaning.

25a

F.2d at 1549 (evidence of annual reports insufficient

without surveys or other evidence of the meaning of

plaintiff's name to plaintiff's suppliers and investors). Here,

however, there is insufficient evidence establishing that

association. As previously noted, other than its own

speculation, plaintiff presented no evidence of the meaning

"Investacorp" to any investors. There is no testimony that

"Investacorp" means the plaintiff's business to them.

Although not relied on by plaintiff as evidence of

secondary meaning, the Court notes that the evidence of

actual consumer confusion is scant. The evidence in the

record consists mostly of anecdotal testimony of plaintiff's

own registered representatives that they were unsure

and/or concerned as to whether plaintiff was related to

defendants.

The remaining evidence amounts to only two alleged

incidents of uncertainty as to whether there was a

connection between plaintiff and defendants. One of the

incidents was related by Mr. John Porter, an employee of

FSC Securities Corporation, one of plaintiff's competitors,

who testified in deposition that he once contacted plaintiff

concerning what he believed to be a NASD compliance

problem involving plaintiff, but which actually involved one

of the defendants. The other incident invioved the

testimony of Mr. John Van Heuvelen, the Unit Investment

Trust Department's manager at Dean Witter Reynolds Inc.,

another one of plaintiffs competitors. Mr. Van Heuvelen

testified that he had read a Forbes magazine article that

he believed was about plaintiff when in fact, it was about

defendants.

These instances of confusion were short-lived and

involved no customers of plaintiff's business. This evidence

is therefore insufficient to establish secondary meaning. See

Safeway Stores, Inc. v. Safeway Discount Drugs, Inc., 675

F.2d 1160, 1167 (11th Cir. 1982) ("Short- lived confusion or

26a

confusion of individuals casually acquainted with a business

is worthy of little weight . . . while confusion of actual

customers of a business is worthy of substantial weight.")

The evidence here falls short of demonstrating that the

primary significance of the name "Investacorp" in the minds

of consumers of financial products and services is not the

product, broker-dealer services, but the producer of the

product, Investacorp, Inc. See Security Centers, 750 F.2d at

1301 (evidence of the sums spent in advertising, of

plaintiff's use of the mark for two years before defendant

set up shop, and of defendant's alleged imitation or

appropriation of the mark insufficient to establish

secondary meaning in the absence of consumer survey). See

also Vision Center, 596 F.2d at 119 (testimony of seven

customers that “Vision Center" meant the plaintiff's

business to them, testimony that plaintiff had occasionally

received mail addressed to other establishments that had

"vision" in their name, evidence that a customer of one of

defendant's stores in another city believed the plaintiff and

defendant were associated, and recognition of plaintiff's

long use of the term insufficient to establish secondary

meaning without any consumer survey). Given plaintiff's

failure to meet its substantial evidentiary burden as to the

issue of secondary meaning, it is appropriate for the court

to deny plaintiffs motion for partial summary judgment

and grant defendants’ motion for summary judgment.’

IV. Conclusion

For the reasons stated above, it is ORDERED and

ADJUDGED as foliows:

” Since the Court concludes that the plaintiff has not met its

substantial evidentiary burden with respect to the secondary meaning

issue, it need not address the issues of likelihood of confusion, likelihood

of injury to business reputation, dilution or abandonment.

27a

1. Plaintiffs motion for partial summary judgment is

denied.

2. Defendants’ motion for summary judgment as to all

claims asserted against them is granted. Summary judgment

is entered in favor of the defendants and against plaintiff

on each of the six counts contained in the amended

complaint.

3. The amended complaint is dismissed with prejudice.

4. Plaintiffs Motion to Compel the Production of —

Documents and Things is denied as moot.

5. Defendants’ Motion In Limine to Exclude Undisclosed

Witnesses is denied as moot.

DONE AND ORDERED in Chambers at Miami,

Florida this Sth day of September, 1989.

/s/THOMAS E, SCOTT

UNITED STATES DISTRICT JUDGE

28a

Appendix C.

United States Court of Appeals

for the Eleventh Circuit

No. 89-6060

INVESTACORP, INC.,

Plaintiff-Appellant,

Vv.

ARABIAN INVESTMENT BANKING

CORPORATION

(INVESTCORP) E.C. D/B/A INVESTCORP

AND INVESTCORP INTERNATIONAL, INC.

Defendants-Appellees.

Before

Johnson and Hatchett, Circuit Judges,

Smith, Senior U.S. Circuit Judge.

(sitting by designation)

ON PETITION(S) FOR REHEARING

(July 23, 1991)

PER CURIAM:

The petition(s) for rehearing filed by appellant,

Investacorp, Inc. is denied.

29a

ENTERED FOR THE COURT:

/s/ JOHNSON, J,

UNITED STATES CIRCUIT JUDGE

30a

Appendix D.

U.S. DEPARTMENT OF COMMERCE

PATENT AND TRADEMARK OFFICE

IN REPLY REFER TO THE FOLLOWING AND THE

FILING DATE:

SERIAL NO.: 73/664563

APPLICANT: ARABIAN INVESTMENT BANKING

CORPORATION (ETC)

MARK: INVESTCORP

ACTION NO.: 01

MAILING DATE: 9/17/87

The assigned Examining Attorney has reviewed the

referenced application and determined the following.

The name, “Investcorp Funding, Inc.," appears in the

record. The Applicant must explain: (1) the relationship

between the Applicant and this party, (2) whether that

party holds any rights in the mark, (3) how the Applicant

benefits from any use of the mark by that party and (4)

how the Applicant controls the nature and quality of the

service under this use. 37 C.F.R. Section 2.38; TMEP

section 1201.09(b).

Pending a satisfactory explanation as to the Investcorp

Funding, Inc. requested above, the Examining Attorney

refuses registration because the Applicant is not the owner

of the mark. Trademark Act Section 1, 15 U.S.C. Section

1051 (1986). Only the owner of a mark may apply to

register the mark.

se ll Ns

3la

If the Applicant is doing business as, is also known as, or

is trading as "Investcorp," the Applicant must amend the

preamble of the application to read "Arabian Investment

Baking[sic] Corporation dba Investcorp." TMEP section

802.02.

The Applicant must amend the dates-of-use clause to

indicate a type of commerce which may be regulated by

Congress, for example, territorial commerce or foreign

commerce between the United States and a specified

foreign country. TMEP section 806.05.

No set form is required for response to this Office

action. The Applicant must respond to each point raised.

The Applicant should simply set forth the required changes

or statements and request that the Office enter them. The

Applicant must sign the response. In addition to the

identifying information required at the beginning of this

ietter, the Applicant should provide a telephone number to

speed up further processing.

The Examining Attorney has searched the Office records

and has found no similar registered or pending mark which

would bar registration under Trademark Act Section 2(d),

15 U.S.C. Section 1052(d) (1986). TMEP section 1105.01.

Js/R. Ellsworth Williams

Trademark Attorney

Law Office 6

(703) 557-2937

32a

Appendix E.

U.S. DEPARTMENT OF COMMERCE

PATENT AND TRADEMARK OFFICE

SERIAL NO.: 73/664563

APPLICANT: ARABIAN INVESTMENT

BANKING CORPORATION (ETC)

MARK: INVESTCORP

ACTION NO.: 02

MAILING DATE: 10/13/87

TRADEMARK INTERVIEW AND AMENDMENT

RECORD

EXAMINER'S AMENDMENT:

In accordance with the authorization granted by the

above applicant or attorney, the application has been

amended as noted below. No response is necessary unless

you object to the amendment.

The preamble should be amended to read: Arabian

Investment Banking Corporation (Investcorp) E.C. also

known as Investcorp.

The dates of use clause should be amended to indicate

that the mark in[sic] used in commerce between Bahrain

and [the]United States.

Investcorp Funding Inc. is a wholly owned subsidiary of

the applicant.

33a

Law Office 6

(703) 557-2937

34a

Appendix F.

U.S. DEPARTMENT OF COMMERCE

PATENT AND TRADEMARK OFFICE

IN REPLY REFER TO THE FOLLOWING AND THE

FILING DATE

SERIAL NO.: 73/688188

APPLICANT: INVESTACORP, INC.

MARK: INVESTACORP, INC.

ACTION NO.: 01

MAILING DATE: 1/25/88

The assigned Examining Attorney has reviewed the

referenced application and determined the following.

The present recitation of services is unacceptable as

indefinite. The Applicant may adopt the following

recitation, if accurate: Investment consulting and brokerage

services in the fields of securities, mutual funds,

partnerships, and other investments. TMEP section

1301.05.

If the Applicant adds new classes in response to the

Office action, then the Applicant must comply with each of

the following.

(1) The Applicant must submit five additional specimens

of use for each new class; these specimens must be of a

type which were in use on or before the filing date of the

application. TMEP section 1113.01.

35a

(2) The Applicant must state dates of first use and use in

commerce for the mark in each new class; these dates must

be on or before the filing date of this application. TMEP

section 1113.01.

(3) The Applicant must submit an affidavit or declaration

under 37 C.F.R. Section 2.20 signed by the Applicant to

verify (1) and (2) above. 37 C.F.R. Sections 2.71(a) and

(b).

(4) The Applicant must list the services by class with the

classes listed in ascending numerical order. TMEP section

1113.01.

(5) The Applicant must submit a filing fee for each

international class of services added to the application; the

filing fee is $200.00 per class. TMEP sections 809.01 and

1113.01.

(6) If the name of another party appears on new

specimens, the Applicant must indicate the relationship

between the Applicant and that party, whether that party

holds any rights in the mark and how the Applicant

controls the use by that party. TMEP section 1201.03.

The Applicant must insert a disclaimer of the descriptive

term, "INC.,” in the application. Trademark Act Section 6,

15 U.S.C. Section 1056 (1986); TMEP section 904.06.

A properly worded disclaimer should read as follows:

No claim is made to the exclusive right to use the term,

"INC.," apart from the mark as shown.

Although the Examining Attorney has searched the

Office records and has found no similar registered mark

which would bar registration under Trademark Act Section

2(d), 15 U.S.C. Section 1052(d) (1986), the Examining

36a

Attorney has found a pending application which may bar

registration.

If this earlier-filed application matures into a

registration, the Examining Attroney may refuse

registration under Section 2(d) of the Act. The Examining

Attorney encloses a copy of the information concerning

application Serial No. 664,563. 37 C.F.R. Section 2.83.

Trademark Attorney

Law Office VI (703) 557-2937

37a

Appendix G.

U.S. DEPARTMENT OF COMMERCE

PATENT AND TRADEMARK OFFICE

SERIAL NO.: 73/688188

APPLICANT: INVESTACORP, INC.

MARK: INVESTACORP, INC.

ACTION NO:: 02

MAILING DATE: 4/13/88

Action on this application is suspended pending the

disposition of application No. 664563.

Ls/Ira J. Goodsaid

Examining Attorney

Law Office 6

(703) 557-2937