ZP NO. 314, LLC v. ILM Capital, LLC
1:16-cv-00521
S.D. Ala.Nov 17, 2018Background
- ZP No. 314, LLC sued ILM Capital and others for trademark-related claims tied to domain name registrations and use.
- District Court previously denied ZP’s motion for summary judgment and granted defendants’ motion for summary judgment in part.
- ZP moved to alter, amend, or vacate that order and alternatively sought certification for interlocutory appeal.
- ZP’s core contention: USPTO’s failure to require proof of secondary meaning for ZP’s marks means the marks are presumptively inherently distinctive (relying on Jysk).
- Defendants moved for reconsideration of the Court’s earlier rulings.
- The Court found the record contains no USPTO finding or letter indicating ZP’s marks were inherently distinctive and denied ZP’s and defendants’ reconsideration requests; interlocutory appeal certification was denied and several ZP motions were ruled moot.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether USPTO inaction/passage to publication presumptively establishes marks are inherently distinctive | ZP: USPTO did not require secondary-meaning evidence, so marks are presumptively inherently distinctive | Defs: No affirmative USPTO finding; passage/publication does not establish inherent distinctiveness | Court: No evidence of any USPTO finding; Investacorp controls — cannot infer inherent distinctiveness from publication; summary judgment stands for claims before federal registration date |
| Whether Jysk controls to create a presumption of inherent distinctiveness | ZP: Jysk establishes that USPTO’s not requiring secondary meaning creates presumption | Defs: Jysk is distinguishable; it involved a USPTO letter explicitly stating inherent distinctiveness and long use | Court: Jysk is distinguishable; absent an express USPTO statement, no presumption arises |
| Whether there is a genuine issue of material fact about descriptiveness vs. inherent distinctiveness before registration | ZP: Marks were inherently distinctive at time of defendants’ conduct | Defs: Record shows marks are descriptive; no proof of inherent distinctiveness before registration | Court: Record lacks evidence of inherent distinctiveness; marks are merely descriptive absent acquired secondary meaning; no material fact precluding summary judgment for pre-registration claims |
| Whether interlocutory appeal under 28 U.S.C. § 1292(b) should be certified | ZP: Order presents controlling legal issue with substantial ground for difference of opinion and would materially advance litigation | Defs: Opposed (implicitly) | Court: Denied — ZP failed to meet high §1292(b) standard; certification not appropriate |
Key Cases Cited
- Jysk Bed ’n Linen v. Dutta Roy, 810 F.3d 767 (11th Cir. 2015) (court found acquired secondary meaning after long use and noted an express USPTO statement that a mark appeared inherently distinctive)
- Investacorp, Inc. v. Arabian Inv. Banking Corp., 931 F.2d 1519 (11th Cir. 1991) (declined to infer PTO’s view from publication; refused to defer to any unstated agency determination)
- OFS Fitel, LLC v. Epstein, Becker & Green, P.C., 549 F.3d 1344 (11th Cir. 2008) (explaining §1292(b) sets a high threshold to avoid piecemeal interlocutory appeals)