Ausable River Trading Post, LLC v. Dovetail Solutions, Inc.
902 F.3d 567
6th Cir.2018Background
- The Tawas Area Chamber of Commerce organizes an annual winter festival called “Perchville” and registered “Perchville” as a trademark for apparel and related goods, with a lapse in registration in 2013 that was quickly remedied in 2015.
- AuSable River Trading Post (the Trading Post) prints and sells merchandise; after being told it would need to pay a $750 licensing fee, it produced Perchville-branded T‑shirts without permission.
- The Chamber obtained a state court injunction against one Trading Post employee; the Trading Post then filed a declaratory-judgment action in state court seeking invalidation of the Perchville mark under the Lanham Act; the case was removed to federal court.
- On remand from an earlier appeal, the district court granted summary judgment to the Chamber, holding “Perchville” is an inherently distinctive trademark; the Trading Post appealed.
- The Sixth Circuit considered whether “Perchville” is generic, descriptive, suggestive/fanciful (i.e., inherently distinctive), and whether the Chamber abandoned the mark or is barred by laches.
Issues
| Issue | Trading Post's Argument | Chamber's Argument | Held |
|---|---|---|---|
| Whether “Perchville” is inherently distinctive (eligible for Lanham Act protection) | Term is not distinctive because it names the festival and thus is not a source-identifying mark | The term is fanciful/suggestive and serves to identify the festival’s source | Held: “Perchville” is inherently distinctive (fanciful or at least suggestive) and eligible for protection |
| Whether “Perchville” is generic | Locals use the term generically for the festival, like “thermos” or “trampoline” became generic | A festival name referring to a unique event is not generic; §1064(3) bars deeming a mark generic solely because it names a unique product/service | Held: Not generic—the term refers to a single event/source, not a class of goods/services |
| Whether the mark is not fanciful because it’s composed of recognizable roots (“perch” + “-ville”) | The component words are in dictionaries and suggest a city of perch, so it’s not fanciful | Even if composed of real elements, the combined term is coined for the festival and is at least suggestive (thus inherently distinctive) | Held: The mash-up is fanciful/suggestive and meets inherent distinctiveness standards |
| Whether the Chamber abandoned the mark or is barred by laches | Registration lapse, third‑party uses, and prior failures to enforce show abandonment or laches | Chamber quickly renewed registration, licenses use, and actively enforces rights—no intent to abandon and no prejudicial delay | Held: No abandonment; laches does not apply—Chamber timely asserted rights |
Key Cases Cited
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (inherently distinctive trade dress/trademarks are protectable)
- Wal‑Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) (distinguishes inherently distinctive marks from descriptive marks requiring secondary meaning)
- Innovation Ventures, LLC v. N.V.E., Inc., 694 F.3d 723 (6th Cir. 2012) (definition of suggestive marks requiring imagination)
- Fuji Kogyo Co. v. Pacific Bay Int’l, Inc., 461 F.3d 675 (6th Cir. 2006) (burden shifting for registered marks; presumption of validity)
- Champions Golf Club, Inc. v. The Champions Golf Club, Inc., 78 F.3d 1111 (6th Cir. 1996) (examples of arbitrary marks and trademark distinctiveness)