a. Secondary Meaning
Secondary meaning is demonstrated where, "in the minds of the public,
the primary significance of a product feature or term is to identify the
source of the product itself." Ford, 930 F.2d at 292 (quoting Freixenet,
S.A. v. Admiral Wine & Liquor Co., 731 F.2d 148, 152 (3d Cir. 1984)). It
is generally established "through extensive advertising which suggests
that the products originate from a single source." Scott Paper Co. v.
Scott's Liquid Gold, Inc., 589 F.2d 1225, 1228 (3d Cir. 1978). A
non-exhaustive list of factors that may be relevant to the issue of
whetheramark has acquired secondary meaning in the market includes the
extent of sales and advertising leading to buyer assoiation, the length
and "exclusivity of use, the fact of copying, customer surveys and
testimony, the use of the mark in trade journals, the size of the
company, the number of sales, the number of customers, and actual
confusion. See Ford, 930 F.2d at 292.
Capital has produced nothing that would suggest that its image has
acquired secondary meaning in the marketplace. To the contrary, the
parties have stipulated that Capital has only been in existence since
January of 1997 and only began using its image in July of 1997, just
slightly more than two years ago.*fn8 Capital has offered nothing to
show that its image has achieved secondary meaning in that brief period
of time; to the contrary, its president testified at the, hearing that
Capital actually stopped using the logo in the Yellow Pages, although it
is undisputed that such advertising is an important source "of business
in the bail bond industry. Cf. Guardian Life Ins. Co. v. American
Guardian Life Assurance Co., 943 F. Supp. 509, 525 (E.D.Pa. 1996) (noting
that "[s]econdary meaning exists where the term has been used for so
long, or advertised so extensively, that the public immediately
associates the term with one particular enterprise").
A lack of "exclusivity of use" also suggests that the Capital image has
not acquired secondary meaning in the marketplace. Smith acknowledged on
cross-examination that two other bail bond companies are using Capital's
exact image without permission. Also, ABC provided the Court with copies
of ads of bail bond companies across the country that feature some sort
of a prisoner breaking out of some form of a jail.
We therefore find that Capital is unlikely to prevail on its contention
that its image has acquired secondary meaning in the marketplace.
b. Inherently Distinctive
We also find that Capital is not likely to prove that its image is
"inherently distinctive." The Supreme Court has held that marks are
classified into categories of increasing distinctiveness:
(1) Generic: Those that "refer to the genus of which
the particular product is a species," Park `N Fly,
Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194,
105 S.Ct. 658, 83 LEd.2d 582 (1985);
(2) Descriptive: Those that merely describe the
product or a feature of it;
(3) Suggestive: Those that suggest a quality or
ingredient of goods;
(4) Arbitrary: "[T]hose words, symbols, pictures,
etc, which are in common linguistic use but which,
when used with the goods or services in issue, neither
suggest nor describe any ingredient, quality or
characteristic of those goods or services." Ford, 930
F.2d at 292 n. 18 (quoting McCarthy on Trademarks and
Unfair Competition § 11:4);
(5) Fanciful: "Fanciful" marks "consist of `coined'
words which have been invented for the sole purpose of
functioning as a trademark% Y(4)27 Marks
such as `letters, numbers, product and container
shapes, and designs and pictures may also be classed
as `fanciful.'" Id.
See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct.
2753, 120 L.Ed.2d 615 (1992); see also Abercrombie & Fitch Co. v. Hunting
World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). Our Court of Appeals has noted
that these categories are separated by only "the finest of lines."
Dranoff-Perlstein Assocs. v. Sklar, 967 F.2d 852, 855 (3d Cir. 1992)