Safeway Transit LLC v. Discount Party Bus, Inc., 0:15-cv-03701

Plaintiffs Safeway Transit LLC and Aleksey Silenko sued Discount Party Bus, Party Bus MN LLC, and Adam Fernandez under the Lanham Act for infringement of three unregistered descriptive marks (including “Rent My Party Bus” and “952 LIMO BUS”) and for reverse domain hijacking.
Plaintiffs moved for partial summary judgment on federal trademark infringement and reverse domain hijacking; the magistrate judge recommended denying the motion, finding genuine fact disputes about secondary meaning and prior use.
Defendants produced evidence of prior use of the disputed marks from 2004–2009, predating Plaintiffs’ claimed use beginning in 2011. Defendants also had multi-year nonuse before resuming use.
Plaintiffs argue Defendants abandoned the marks (5–6 years nonuse) and that Plaintiffs acquired exclusive use/secondary meaning (five years of exclusive use for “Rent My Party Bus”).
The magistrate judge found insufficient evidence that the marks had acquired secondary meaning in Plaintiffs’ favor and identified disputed factual issues (e.g., whether Defendants’ earlier use or advertising was seen by consumers during Plaintiffs’ claimed exclusive period).
The district court exercised discretion to consider Plaintiffs’ supplemental declaration but adopted the R&R and denied Plaintiffs’ motion for partial summary judgment.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether Plaintiffs’ descriptive marks acquired secondary meaning before alleged infringement	Plaintiffs: marks (esp. “Rent My Party Bus”) had acquired secondary meaning through exclusive use and advertising	Defendants: prior use and resumed use undermine Plaintiffs’ claim; consumer perception uncertain	Denied summary judgment; unresolved material fact for jury on secondary meaning
Effect of Defendants’ prior use and multi‑year nonuse (abandonment)	Plaintiffs: Defendants abandoned marks after 2008–2009 nonuse, so Plaintiffs can claim priority	Defendants: resumption of use and evidence of continued consumer exposure rebuts abandonment inference	Abandonment creates rebuttable presumption but resumption and disputed facts make it for jury to decide
Whether Plaintiffs made a prima facie five‑year exclusive use showing for each mark	Plaintiffs: have five years for “Rent My Party Bus”; insufficient for “952 LIMO BUS”	Defendants: evidence (e.g., ads seen by Fernandez) creates dispute about exclusivity and timing	Court: Plaintiffs cannot establish as a matter of law; “952 LIMO BUS” fails prima facie; “Rent My Party Bus” disputed
Whether new supplemental evidence should be considered on objections	Plaintiffs: submit new declaration to fill evidentiary gaps	Defendants: new evidence should be excluded because not presented to magistrate	Court: exercised discretion to consider it but found it did not alter R&R conclusions

Co–Rect Prods., Inc. v. Marvy! Advertising Photography, Inc., 780 F.2d 1324 (8th Cir.) (secondary meaning requirement for unregistered descriptive marks)
Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863 (8th Cir.) (user must show mark identifies source and distinguishes goods)
Stuart Hall Co. v. Ampad Corp., 51 F.3d 780 (8th Cir.) (anonymous‑source doctrine: consumers must associate mark with a single source)
First Bank v. First Bank Sys., Inc., 84 F.3d 1040 (8th Cir.) (secondary‑meaning inquiry is fact‑intensive and rarely resolved on summary judgment)
Two Pesos Inc. v. Taco Cabana, Inc., 505 U.S. 763 (U.S. Sup. Ct.) (five years’ exclusive use creates prima facie case of secondary meaning for descriptive marks)
Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (U.S. Sup. Ct.) (summary judgment standard; genuine dispute definition)
Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574 (U.S. Sup. Ct.) (summary judgment and inference drawing principles)
Cmty. of Christ Copyright Corp. v. Devon Park Restoration Branch of Jesus Christ's Church, 634 F.3d 1005 (8th Cir.) (burden to prove abandonment by clear and convincing evidence)