Cross Commerce Media, Inc. v. Collective, Inc.
841 F.3d 155
2d Cir.2016Background
- Collective, Inc. (Cl) owns registrations for “Collective Network,” “Collective Video,” and “C Collective The Audience Engine,” and claims common-law rights in the unregistered mark “collective.”
- Cross Commerce Media, Inc. (CCM) began using the mark “Collective[i]” (and variants) in 2011; Cl sent cease-and-desist letters and asserted infringement; CCM sued for declaratory relief and sought cancellation/modification of Cl’s registrations.
- The district court granted summary judgment to CCM in three orders: (1) classified the unregistered mark “collective” as descriptive; (2) held Cl lacked secondary meaning and that Cl did not use the mark in commerce before CCM; and (3) found Cl abandoned two registrations and ordered cancellation, plus awarded attorney’s fees.
- On appeal, the Second Circuit reversed or vacated substantial portions of those orders and remanded, holding that key factual disputes and legal errors precluded the district court’s blanket rulings.
- The Court of Appeals concluded (inter alia) that “collective” as used by Cl is suggestive (entitling it to protection without proof of secondary meaning), that genuine disputes exist about Cl’s prior use in commerce, and that abandonment/cancellation and fee awards were premature.
Issues
| Issue | CCM's Argument | Cl's Argument | Held |
|---|---|---|---|
| Inherent distinctiveness of unregistered mark “collective” | "Collective" is descriptive as a matter of law | "Collective" is suggestive (or fact issue for jury) | The mark is suggestive as a matter of law; district court erred classifying it descriptive |
| Secondary meaning / entitlement to protection | No secondary meaning shown; thus no protection | Suggestive mark entitles some protection without secondary meaning; factual dispute exists | Vacated dismissal based on lack of secondary meaning because mark is suggestive; CCM may renew motion on remand |
| First use in commerce (priority) | CCM used marks first; Cl did not use "collective" in commerce before CCM | Cl used collective.com, advertising, capitalized use on site and marketing materials prior to 2011 | Genuine dispute of material fact exists about Cl's prior commercial use; summary judgment improper |
| Infringement of registered marks & cancellation/abandonment | CCM sought cancellation for abandonment or descriptiveness; argued no infringement | Cl urged registered marks are valid and were used; disputed abandonment and infringement | District court prematurely dismissed infringement claims regarding registered marks and improperly granted cancellation for abandonment; remanded for full Polaroid-style analysis and further proceedings; fee award vacated |
Key Cases Cited
- Bernard v. Commerce Drug Co., 964 F.2d 1338 (2d Cir.) (descriptive vs. suggestive trademark framework)
- Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033 (2d Cir.) (secondary meaning requirement for descriptive marks)
- McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126 (2d Cir.) (suggestive marks may receive protection without proof of secondary meaning)
- Playtex Prods., Inc. v. Ga.-Pac. Corp., 390 F.3d 158 (2d Cir.) (analysis distinguishing suggestive from descriptive marks)
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir.) (eight-factor likelihood-of-confusion test)
- Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir.) (contextual inquiry into inherent distinctiveness)
- Hana Fin., Inc. v. Hana Bank, 135 S. Ct. 907 (Sup. Ct.) (trademark rights determined by first use in commerce)