1:22-cv-02988
N.D. Ill.Feb 26, 2024Background
- The TRiiBE, Inc. owns the federally registered service mark "THE TRIIBE" for various media and entertainment services.
- TRiiBE began using "THE TRIIBE" in 2017 during community outreach events; in 2018, events were hosted at a club owned by defendant Morris.
- In 2022, TRiiBE learned that Morris was opening a new venue called "Tribe," allegedly infringing on TRiiBE's mark.
- TRiiBE sent a cease-and-desist letter to the defendants, who declined to stop using the "Tribe" name, leading to this lawsuit.
- The defendants asserted counterclaims seeking a declaration of non-infringement and cancellation of the mark, arguing "Tribe" is generic.
- Defendants moved for summary judgment, asserting "THE TRIIBE" is not protectable as a trademark.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether "THE TRIIBE" is generic | The mark is distinctive and not generic, as it identifies their services. | "Tribe" is generic, describing a social group or movement, thus ineligible for trademark protection. | Not generic; eligible for protection. |
| Whether "THE TRIIBE" functions as a trademark | The mark serves as a source identifier for TRiiBE’s services. | The mark is a commonplace term, conveying a social movement, not a source. | Defendants provided no evidence; argument rejected. |
| Applicability of TTAB cases on registrability of terms | TTAB cases are distinguishable, and registration remains valid. | Relied on analogous TTAB decisions about generic/expression marks. | TTAB cases not persuasive without evidence. |
| Summary judgment on non-protectability | Mark is federally registered and presumptively distinctive. | Mark can't distinguish services; doesn't function as trademark. | Motion for summary judgment denied. |
Key Cases Cited
- SportFuel, Inc. v. PepsiCo, Inc., 932 F.3d 589 (7th Cir. 2019) (explains categories of trademark distinctiveness and their legal protection)
- Uncommon, LLC v. Spigen, Inc., 926 F.3d 409 (7th Cir. 2019) (federal registration presumes inherent distinctiveness unless proven otherwise)
- Liquid Controls Corp. v. Liquid Control Corp., 836 F.2d 934 (7th Cir. 1986) (defines generic marks and their lack of trademark protection)
- America Online, Inc. v. AT&T Corp., 243 F.3d 812 (4th Cir. 2001) (inherent distinctiveness depends on context of use with particular goods/services)