Cross Commerce Media, Inc. v. Collective, Inc.
15-782
| 2d Cir. | Nov 7, 2016Background
- Collective, Inc. (CI) and Cross Commerce Media, Inc. (CCM) are competing data‑analytics/adtech software companies; CI owns three federal registrations containing the word "Collective" and asserts common‑law rights in the unregistered mark "collective."
- CCM began using the stylized name "Collective[i]" in 2011; CI had used collective‑form marks and acquired collective.com earlier (domain live in 2008) and registered marks between 2008–2011.
- CCM sued for declaratory relief (no rights in unregistered "collective," no infringement, and cancellation/modification of CI registrations); CI counterclaimed for trademark infringement of both the registered marks and the unregistered mark "collective."
- The district court granted summary judgment to CCM in a series of orders: it held the unregistered mark "collective" descriptive (requiring secondary meaning), found CI lacked secondary meaning and prior use in commerce, dismissed infringement claims (including registered marks), ordered cancellation/disclaimer of registrations, and awarded fees.
- The Second Circuit reversed in part and vacated in part: it held "collective" is suggestive (entitled to protection without proof of secondary meaning), found genuine disputes as to CI's prior commercial use and as to abandonment of registered marks, vacated the fee award, and remanded for further proceedings.
Issues
| Issue | Plaintiff's Argument (CCM) | Defendant's Argument (CI) | Held |
|---|---|---|---|
| Inherent distinctiveness of unregistered mark "collective" | "Collective" is descriptive as used by CI and thus requires proof of secondary meaning | "Collective" is suggestive and entitled to protection without secondary meaning | Court: "collective" is suggestive as a matter of law; district court's descriptive finding reversed |
| Prior use in commerce (priority) | CI did not use "collective" in commerce before CCM; therefore CI has no prior rights | CI had continuous commercial use (e.g., collective.com, advertising, marketing pages) predating CCM | Court: Genuine dispute of fact exists as to CI's prior use; summary judgment improper |
| Infringement of CI's registered marks | (CCM did not squarely move on registered‑mark infringement; argued registered marks wouldn't help CI re: unregistered mark) | CI asserted infringement of registered marks and validity of registrations | Court: District court prematurely disposed of registered‑mark counterclaims without Polaroid likelihood‑of‑confusion analysis; vacated and remanded for consideration |
| Abandonment of registered marks and attorney's fees | CI abandoned "Collective Network" and "Collective Video"; prevailing party fees justified | CI presented evidence of continuous use and promotion of those marks; fees premature | Court: Genuine dispute as to abandonment; cancellation and fee award vacated; fee award premature because no prevailing party yet |
Key Cases Cited
- Bernard v. Commerce Drug Co., 964 F.2d 1338 (2d Cir.) (inherent distinctiveness categories)
- Playtex Prods., Inc. v. Ga.-Pac. Corp., 390 F.3d 158 (2d Cir.) (distinguishing suggestive vs. descriptive marks)
- McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126 (2d Cir.) (suggestive marks entitled to protection without secondary meaning)
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir.) (eight‑factor likelihood‑of‑confusion framework)
- TCPIP Holding Co. v. Haar Commc'ns, Inc., 244 F.3d 88 (2d Cir.) (third‑party usage and effect on descriptiveness)
- PaperCutter, Inc. v. Fay's Drug Co., 900 F.2d 558 (2d Cir.) (PTO registration without secondary‑meaning showing affords presumptive distinctiveness)
- Murphy Door Bed Co. v. Interior Sleep Sys., Inc., 874 F.2d 95 (2d Cir.) (great weight to PTO conclusions)
- Hana Fin., Inc. v. Hana Bank, 135 S. Ct. 907 (U.S.) (trademark rights determined by first use in commerce)
- Virgin Enters. Ltd. v. Nawab, 335 F.3d 141 (2d Cir.) (two‑prong test: protectability and likelihood of confusion)