WORK-N-PLAY unenforceable against WORK AND PLAY use

In Custom Vehicles Inc v Forest River Inc, the US Court of Appeals for the Seventh Circuit has ruled that a federal trademark registration for WORK-N-PLAY could not be enforced against the mark WORK AND PLAY for similar goods because WORK-N-PLAY had not acquired secondary meaning due to insufficient sales.

Custom Vehicles Inc produces vans that can be converted from a mobile office to a camper, or vice versa. In 2000 Custom Vehicles filed an intent-to-use application to register the term WORK-N-PLAY with the US Patent and Trademark Office. At the time the statement of use was filed, and through the end of 2003, Custom Vehicles had sold only one WORK-N-PLAY van, a demo, to a family member for $1,000. In 2004 it sold six more vans under the mark.

In 2001 Forest River Inc began using the mark WORK AND PLAY for vans that offered a ramped door in the back and a repair shop within, for the dual purpose of transporting and fixing motorcycles and snowmobiles. By 2004 Forest River's annual sales had exceeded $10 million.

In 2005 Custom Vehicles brought a suit against Forest River for trademark infringement.

In affirming the district court's decision to grant summary judgment to Forest River, the US Court of Appeals for the Seventh Circuit noted that, as a descriptive term, WORK-N-PLAY could gain trademark protection only if it had acquired secondary meaning (regardless of whether the term was registered). Addressing Custom Vehicles' reliance on its registration as a presumption of enforceability, the court noted that "the act of registration merely begins the process that leads to the presumption". The court found that because Custom Vehicles had failed to make significant sales of its van, WORK-N-PLAY had not obtained secondary meaning. The court also emphasized that there must be a bona fide use of the mark in commerce to obtain a federal registration, which in this case had not been met by the sale of a single demo van by Custom Vehicles.

Ron N Dreben, Morgan Lewis, Washington DC

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