suggestive, it is considered inherently distinctive and
automatically protectable. Id. at 297; Specialty
Measurements, 763 F. Supp. at 94. If the mark is descriptive, it
is only protected if it has acquired secondary meaning. A.J.
Canfield, 808 F.2d at 297. A generic mark is not protected.
Id. Because the marks at issue are unregistered, the party
seeking protection has the burden of proving that the mark is
arbitrary, suggestive, or descriptive. See id.
A mark is considered arbitrary if it "bear[s] `no logical or
suggestive relation to the actual characteristics of the goods.'"
Id. at 296(quoting Keebler Co. v. Rovira Biscuit Corp.,
624 F.2d 366, 374 n. 8 (1st Cir. 1980)); a suggestive mark
"suggest[s] rather than describe[s] the characteristics of the
A descriptive mark "describe[s] a characteristic or ingredient
of the article to which it refers." A.J. Canfield, 808 F.2d at
296. For a descriptive mark to be protected, the owner of the
mark must demonstrate that the mark has gained secondary meaning;
"[s]econdary meaning exists when the trademark is interpreted by
the consuming public to be not only an identification of the
product, but also a representation of the product's origin."
Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225,
1228 (3d Cir. 1978).
A generic mark is not protected because the mark is "the common
descriptive name of a product class." A.J. Canfield, 808 F.2d
at 296. The purpose of trademark protection is to protect the
public from confusion and "enabl[e] the buyer to distinguish the
goods of one producer from the goods of others." Id. at 304.
Generic marks are not protected because competitors must use
these words to describe the product; to hold otherwise would
stifle competition. See id. at 304-05.
B. Ownership of a Mark
To prevail under the Act, the party must show that it owns the
mark in question. The mark belongs to the party who is the first
adopting and continuously using the mark. See Ford Motor, 930
F.2d at 297(citing Tally-Ho Inc. v. Coast Community College
Dist., 889 F.2d 1018, 1022-23 (11th Cir. 1989)). Trademark
rights are acquired "through actual prior use in commerce."
Tally-Ho, Inc., 889 F.2d at 1022(citing United States v.
Steffens, 100 U.S. 82, 25 L.Ed. 550 (1879)). Because trademark
rights arise only in connection with commercial activity, "actual
and continuous use is required to acquire and retain a
protectable interest in a mark." Id. at 1022-1023(footnote
omitted). The party asserting ownership of the trademark must
present evidence that the trademark has achieved significant
market penetration; sales volume must be more than de minimis.
See Lucent Information Management, Inc. v. Lucent Technologies,
Inc., 186 F.3d 311 (3d Cir. 1999) (holding limited use of a mark
did not constitute prior use in commerce sufficient to establish
rights in the mark).
For either party to obtain trademark rights in the FSS mark, it
must have used the mark as more than an abbreviation for the
company's or product's name; initials as an abbreviation are
merely shorthand for another name or mark rather than a separate
mark with a distinct meaning. To gain protection, a party must
have used the initials, like any other trademark, to show the
source of its goods or services. See A.J. Canfield, 808 F.2d at
C. Likelihood of Confusion
The court must consider the likelihood of confusion to the
consuming public if there is a valid, protectable mark.*fn6 If
parties use a mark concurrently and their goods directly compete
with each other, the court will "rarely look beyond the mark
itself." A & H Sportswear Inc. v. Victoria's Secret Stores,
Inc., 166 F.3d 197, 202 (3d Cir. 1999) (quoting Interpace Corp.
v. Lapp, Inc., 721 F.2d 460, 462 (3d Cir. 1983)); see Fisons
Horticulture, Inc., 30 F.3d at 472. If the goods or services at
issue do not directly compete in the same market, the court
weighs the relevant factors discussed in Scott Paper, 589 F.2d
"(1) the degree of similarity between the owner's
mark and the alleged infringing mark;
(2) the strength of owner's mark;
(3) the price of the goods and other factors
indicative of the care and attention expected of
consumers when making a purchase;
(4) the length of time the defendant has used the
mark without evidence of actual confusion arising;
(5) the intent of the defendant in adopting the mark;