Defendant-appellant Lane Capital Management, Inc. appeals from an order of the United States District Court for the Southern District of New York (Denny Chin, Judge) entered August 6, 1998, granting in part the motion for summary judgment by plaintiff-appellee Lane Capital Management, Inc., and enjoining appellant from using the service mark “Lane Capital Management,” or any confusingly similar mark, in connection with its services on a nationwide basis.
Appellee sued appellant for infringement of appellee’s service mark “Lane Capital Management.” On appellee’s motion for summary judgment, Judge Chin found that no genuine issue of material fact existed as to whether appellee’s mark was valid and protectible, or as to whether appellant’s use of the mark caused a likelihood of confusion in the marketplace. Judge Chin further found that appellant’s unlawful use defense had been waived due to appellant’s failure to plead it.
Lane Capital Management, Inc. v. Lane Capital Management, Inc.,
On appeal, appellant argues that genuine issues of material fact remain as to whether appellee’s mark is inherently distinctive and, hence, valid and protectible. Appellant also argues that Judge Chin abused his discretion in denying the motion to amend the answer to add the unlawful use defense, and that genuine issues of material fact exist on that defense. For the reasons set forth in the discussion that follows, we reject appellant’s arguments and affirm the order appealed from.
I. BACKGROUND
A. The Parties
Paul Fulenwider founded appellee and is the firm’s manager and owner. Appellee was incorporated in Delaware on December 23, 1993, and immediately began business as an investment advisor. Appellee manages three investment funds which have $200 million in equity. Investors in the funds include individuals and entities “from around the globe.” Additionally, ap-pellee manages three individual accounts: one for a wealthy individual, one for a foundation, and one unspecified. Fulen-wider chose the name “Lane Capital Management” at the suggestion of his wife. Lane was his father’s nickname and middle name, and is his son’s middle name. Fu-lenwider also asserts that he chose the name because “it’s like a narrow path or channel. It’s a relatively straight and narrow path. You know, it can be a shipping lane, an air lane, or a bowling lane. And in the context of being a risk management type firm, the idea of having a channel or a path or a tightly controlled thing had a very interesting meaning.”
Douglas C. Lane is the president and majority shareholder of appellant, which manages stock portfolios and provides investment advice for individuals. Appellant was incorporated in New York on July 6, 1994. Douglas Lane began soliciting clients the first week of July 1994 and began providing investment advisor services to clients on July 25, 1994. Appellant has 700 clients with portfolios or accounts valued at $700 million. At the suggestion of his wife, Douglas C. Lane chose the name “Lane Capital Management” because Lane is his surname and he wished to benefit from the good will he had built in his name over the course of his career as an investment advisor.
B. The Events Leading to the Suit
Appellee first became aware of appellant in April 1996, when appellee applied to register as a foreign corporation in New York. Fulenwider contacted appellant in June 1996 and requested that appellant change its name. Appellant took the position that appellee should change its name.
*342 On November 12, 1996, appellee applied to the U.S. Department of Commerce, Patent and Trademark Office (“PTO”), for a service mark for “Lane Capital Management” to be listed on the principal register.
C. The Suit
Appellee commenced this action on February 14, 1997. Appellee alleged service mark infringement under 15 U.S.C. § 1125(a) and related federal and state claims. Appellant answered on March 24, 1997, raising a number of affirmative defenses, but not the unlawful use defense. 1
On January 27, 1998, the PTO granted appellee’s application for a service mark for the principal register for “financial services, namely investment management in the field of securities, commodities and other investment media....” On February 11, 1998, appellee moved for summary judgment.
As relevant to this appeal, appellant raised two grounds in opposition to the motion. First, appellant contended that a genuine issue of material fact existed as to whether appellee’s service mark was inherently distinctive. Appellant contended that the fact-finder could find that the purchasing public perceived appellee’s mark to be primarily merely a surname. If the fact-finder did so find, then appellant’s mark would not be inherently distinctive, and appellant would prevail on the infringement claim because there had been no showing of acquired distinctiveness. Appellant proffered three pieces of evidence in support of its argument that a genuine issue of material fact existed on this point. As an initial matter, appellant produced evidence that Lane is the 170th most popular surname in the United States and that in the New York City area there are almost 1,000 residential listings for individuals with the surname “Lane.” Appellant also proffered evidence that there are numerous companies in New York City, nationwide, and on the Internet, who use Lane in their business names. Specifically, appellant pointed to over 125 business listings in the New York City area for companies with the name “Lane”; to a trademark research report that indicates “many more” companies who use the word “Lane” as a trade name in connection with financial services, insurance, or related businesses nationwide; and, to five companies that do business on the Internet under the name “Lane.” Finally, appellant alleged that it is a common industry practice for financial institutions to employ surnames in their trade names. With respect to this last contention, appellant produced no actual evidence that employing surnames is a common industry practice, and thus relied on the conclusion that such fact is common knowledge. See 9 Wigmore, Evidence § 2570 at 726 (Chadbourn rev. 1981) (in drawing conclusions, fact-finder may resort to facts upon which people “have a common fund of experience and knowledge, through data notoriously accepted by all”).
Second, appellant argued that a genuine issue of material fact existed as to the unlawful use defense. According to appellant, if the fact-finder determined that ap-pellee had held itself out as a investment adviser, then appellee’s failure to register as an investment adviser with the Securities and Exchange Commission (“SEC”) violated the Investment Advisers Act of 1940. As such, argued appellant, the use of the mark in commerce was unlawful and could not establish protectible rights.
D. Judge Chin’s Ruling
Judge Chin found that appellee’s registered mark was inherently distinctive and that appellant’s use of the mark would cause confusion in the marketplace. He
*343
found that appellant’s unlawful use defense was an affirmative defense that had been waived because it had not been pleaded; and, in the alternative, that appellant had failed to raise a triable issue on the defense.
Lane,
E. Motion for Reargument
On August 10, 1998, appellant filed a motion for reargument or, “in the alternative, for an order pursuant to Rule 15 ... permitting [appellant] to amend its answer to plead an affirmative defense” of unlawful use. Judge Chin denied the motion, and appellant appealed.
II. DISCUSSION
As noted, the two issues on appeal are whether Judge Chin properly granted summary judgment for appellee on the issue of the validity and protectibility of the mark, and the independent issue of whether Judge Chin properly prohibited appellant from amending its complaint to add the unlawful use defense.
In this context, a number of potential issues not contested on appeal bear mention. First, appellee did not assert at the summary judgment stage that its mark had acquired distinctiveness — secondary meaning — and that issue is not in the case.
Second, except in the context of the unlawful use defense, appellant does not dispute Judge Chin’s finding that appellee was the senior user. Similarly, except to the extent of challenging the validity of appellee’s mark in the first instance, appellant does not dispute that its subsequent use of the mark caused a likelihood of confusion in the marketplace, or that the issuance of the injunction, or its scope, was proper.
Third, appellant does not challenge Judge Chin’s treatment of the mark as a registered one. As noted, the complaint alleged the infringement of an unregistered mark pursuant to 15 U.S.C. § 1125(a).
See Two Pesos, Inc. v. Taco Cabana, Inc.,
Fourth, while Lane Capital Management is the name of appellee’s business, appellant has not argued that this is a case about trade names rather than service marks. The parties are in evident agreement that, other issues aside, Lane Capital Management was used as a
service mark
and properly registered as such.
Cf. Martahus v. Video Duplication Servs., Inc.,
A. Standard of Review
We review a district court’s ruling on summary judgment de novo, taking all factual inferences in favor of the non-moving party. Summary judgment is appropriate where there are no genuine disputes concerning any material facts, and where the moving party is entitled to judgment as a matter of law.
Harvis Trien & Beck, P.C. v. Federal Home Loan Mortgage Corp. (In re Blackwood Assoc., L.P.),
We review a decision to deny a motion to amend a complaint for abuse of discretion.
Krumme v. WestPoint Stevens Inc.,
B. The Protectibility of Appellee’s Mark
1. Basic Principles
The purpose of a mark is to identify the source of products — a word which *344 we use in this opinion as a synonym for goods and services — to prospective consumers. See, e.g., 15 U.S.C. § 1127 (service mark is “any word, name, symbol, or device, or any combination thereof’ used to identify and distinguish the services of one person from the services of another, and to indicate the source of those services). 2
To prevail on an infringement claim, a plaintiff must establish that it possesses a valid, legally protectible mark and that defendant’s subsequent use of a similar mark is likely to create confusion as to the origin of the product at issue.
See Pirone v. MacMillan, Inc.,
To be valid and protectible, a mark must be capable of distinguishing the products it marks from those of others.
See Two Pesos,
The five categories focus the inquiry on the distinctiveness of the mark. Fanciful, arbitrary, and suggestive marks are deemed inherently distinctive. Their intrinsic nature serves to identify a particular source of a product, so they will be automatically protected. Marks which are descriptive are not inherently distinctive, and a showing that the mark has acquired distinctiveness — “secondary meaning” — is required before protection will be extended. Generic marks are not protectible.
See Two Pesos,
The classification of a mark is a factual question.
Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc.,
Further, the relevant purchasing public is not the population at large, but prospective purchasers of the product.
Blisscraft of Hollywood v. United Plastics Co.,
A certificate of registration with the PTO is prima facie evidence that the mark is registered and valid
(ie.,
protective), that the registrant owns the mark, and that the registrant has the exclusive right to use the mark in commerce.
See
15 U.S.C. § 1115(a). Registration by the PTO without proof of secondary meaning creates the presumption that the mark is more than merely descriptive, and, thus, that the mark is inherently distinctive.
PaperCutter, Inc. v. Fay’s Drug Co.,
In the particular context of inferring the view of the purchasing public, the fact of registration thus confers a procedural advantage on the registrant in an infringement action: the opposing party must overcome the presumption that the purchasing public perceives the mark to be inherently distinctive. However, the statute does not state that the certificate of registration is itself evidence of how the public actually views the mark, and we conclude that the certificate does not constitute evidence of this fact as such. Cf. Door Sys., Inc. v. Pro-Line Door Sys., Inc., 83 F.3d 169, 172 (7th Cir.1996) (once defendant comes forward with evidence from which fact-finder could conclude that registered mark is generic, plaintiff “cannot obtain any residual mileage from the registration of its trademark. The presumption of validity that federal registration confers evaporates as soon as evidence of invalidity is presented. Its only function is to incite such evidence, and when the function has been performed the presumption drops out of the case.”) (citations omitted).
2. Surnames
Marks that are .“primarily merely surnames” constitute a specific subcategory of descriptive marks, in that they describe the fact that the named individual is affiliated with the firm.
See Pirone,
A mark is primarily merely a surname if the primary significance of the mark to the purchasing public is that of a surname.
In re Hutchinson Tech., Inc.,
A trademark is a trademark only if it is used in trade. When it is used in trade *346 it must have some impact upon the purchasing public, and it is that impact or impression which should be evaluated in determining whether or not the. primary significance of a word when applied to a product is a surname significance. If it is, and it is only that, then it is primarily merely a surname.
Id., followed by Hutchinson,
Applying this principle,
Rivera Watch
noted that surnames such as “Reeves,” “Higgins,” and “Wayne” are primarily merely surnames whereas “King” and “Cotton” are not, because the latter have “well known meanings as a word in the language.”
Id.
However, the mere fact that a word has a dictionary definition does not exclude the possibility that it is primarily merely a surname.
See In re Nelson Souto Major Piquet,
Further, when the mark at issue is a composite mark consisting of personal names and additional words, the question becomes what the purchasing public would think when confronted with the mark as a whole.
Hutchinson,
3. Judge Chin Correctly Granted Summary Judgment for Appellee
To defeat appellee’s motion for summary judgment, appellant had to produce evidence from which the fact-finder could reasonably find that the mark was primarily merely a surname. Evidence that was merely colorable or not significantly probative was insufficient to meet this burden; the evidence must have been such as to permit the fact-finder at trial to “properly proceed” to a verdict for appellant.
Anderson v. Liberty Lobby, Inc.,
As noted, to defeat appellee’s motion for summary judgment, appellant proffered evidence that Lane is a popular surname, that people named Lane have named their businesses after themselves, and that it is common knowledge that this practice is particularly common in the financial services industry. This evidence is insufficient to create a genuine issue for trial.
The evidence that a mark is a common surname, in the absence of a dictionary definition, is evidence towards establishing a prima facie case of unprotectibility in a registration proceeding.
Compare In re Harris-Intertype Corp.,
Appellant does not explain what it considers to be the evidentiary significance of the fact that businesses in New York City, nationwide, and on the Internet incorporate Lane in their names. The Federal Circuit has held that these types of listings can be admissible and probative of the strength of a service mark for the purposes of determining likelihood of confusion.
Lloyd’s Food Prods., Inc. v. Eli’s,
*347
Inc.,
For similar reasons, we see no genuine issue of material fact created by the evidence that it is common knowledge that financial service companies frequently employ surnames in their trade names. We basically agree with Judge Chin’s analysis of this issue.
See Lane,
In sum, all that this evidence tends to show is that Lane has been used in business names as a surname, and that the use of surnames in business names has often occurred in the parties’ industry. This highly circumstantial evidence appears to be somewhat probative of the ultimate fact that appellant must prove. It may help to contextualize and bolster other, more direct evidence of consumer perception. It does not, however, appropriately support a conclusion that Lane is primarily merely a surname. We hold that, by itself, this *348 evidence is too weak to create a genuine issue for trial.
Appellant’s answer to these evidentiary gaps is that the record is “empty of any evidence that ‘Lane’ suggests anything other than a surname.” This argument posits that — contrary to the assertion of Fulenwider that Lane relies on its dictionary definition to connote a “tightly controlled” approach to investing — Lane, in this context, could only have a surname significance because it could not possibly mean anything else. Even assuming that Fulenwider’s view can be rejected as a matter of law, appellant’s argument fails because it sets up a false choice between Lane as either a surname or a suggestive term within the mark as a whole. Appellant ignores the possibility that Lane in this context means nothing, and is merely a placeholder akin to “X Capital Management.” In this context, the dictionary meaning of Lane need only be strong enough to negate its surname significance in the mind of prospective consumers; the dictionary definition need not itself displace that surname significance in their minds.
Perhaps luring appellant to the false conclusion that a triable issue can be created on minimal evidence are the various cases where we have categorized marks with no apparent reliance on evidence beyond the mark and the nature of the product itself.
See, e.g., Hasbro,
These cases mean little more than that in some cases factual questions may be put into dispute and resolved even on minimal evidence. These cases should not be read for the general proposition that a genuine issue of fact exists in every case once the mark and the nature of the product it marks are in evidence. Indeed, if the only evidence is the mark and the product, then the view of the purchasing public may be divined only if the purchasing public could have only one view, or if one competing view is dominant enough to permit a reasonable conclusion by the preponderance standard.
Cf. Rivera Watch,
By opposing appellee’s motion for summary judgment, appellant seeks a trial on the disputed factual issue of how the purchasing public perceives the mark “Lane Capital Management.” Appellant fails, however, because it has not proffered evidence from which a reasonable fact-finder could resolve the factual issue in appellant’s favor.
See Anderson,
Thus, Judge Chin determined correctly that appellant had failed to “present evidence to create an issue of fact as to the presumptive validity of plaintiffs mark.”
Lane,
C. The Unlawful Use Defense
The Investment Advisers Act of 1940, 15 U.S.C. § 80b-1, et seq., requires investment advisers who hold themselves out generally to the public to register with the SEC. See 15 U.S.C. § 80b-3. As noted, appellant raised the defense that appel-lee held itself out generally to the public, that it failed to register with the SEC, that this failure rendered its use of the mark in interstate commerce unlawful and, thus, that its mark was unprotectable. Judge Chin found, and appellant does not dispute, that this defense is an affirmative defense which appellant bore the burden to plead and prove. We find that Judge Chin did not abuse his discretion in denying appellant’s belated motion to amend its answer to add this defense.
Central to appellant’s argument is that appellee had actual notice that appellant would raise the unlawful use defense, and that the matter was thoroughly developed during discovery. This contention is not supported by the record.
The issue of appellee’s failure to register with the SEC was raised repeatedly throughout the case, but never in a context that would have alerted appellee to the unlawful use defense. Appellant raised the registration issue to support its assertion that it had adopted its mark in good faith and without knowledge of appellee’s mark. In answers to interrogatories, in its Local Rule 56.1 statement opposing summary judgment, and in supporting papers, appellant also contended that appellant’s use and promotion of the mark had been insufficiently public to establish rights in the mark, and that its failure to register was evidence of its inability to promote the mark. Indeed, appellant went so far as to assert that there was no evidence that appellee had promoted its services to investors at all.
In short, appellant used the failure to register not in support of an unlawful use defense, but only as evidence of its position that appellee’s use of the mark in commerce had not been sufficiently public to establish service mark rights. Even if ap-pellee had divined the alternative unlawful use theory (which it claims not to have *350 done), appellee undoubtedly would have concluded that appellant had strategically elected not to raise it, because the unlawful use defense directly conflicted with the failure to promote defense.
Appellant first raised the unlawful use defense in its memorandum of law opposing summary judgment. Acknowledging that its primary argument was that appel-lee had not promoted “any services to investors in the United States,” appellant argued in the alternative that “[e]ven if’ appellee had promoted its services, the mark was nevertheless unprotectable because “these activities were illegal.”
Moreover, when it first raised the defense, appellant did not move to amend the answer. Only
after
Judge Chin rejected appellant’s original defense, granted summary judgment, and issued an injunction, did appellant move — under the auspices of a motion for reargument
5
— to add the unlawful use defense. It is obvious why appellant, having just lost the case, would want to relitigate it under a new theory. However, such a strategy engages all the considerations — undue delay, bad faith, and prejudice to the opposing party — that would motivate a district court to deny the motion to amend.
See Krumme,
Judge Chin did not abuse his discretion by denying a motion to amend that was made only after the case was lost. In affirming, we have not considered, and we express no view regarding, the merits of the defense or Judge Chin’s discussion thereof.
III. CONCLUSION
For the foregoing reasons, we affirm the grant of summary judgment.
Notes
. Appellant also counterclaimed for false designation of origin under 15 U.S.C. § 1125(a). On appellee's motion for summary judgment, Judge Chin dismissed the counterclaim. That portion of the ruling, as well as the resolution of the remainder of appellee’s claims, are not disputed on this appeal and are, thus, not discussed further.
. "[I]dentical standards” generally govern trademark claims and service mark claims. West & Co. v. Arica Inst., Inc., 557 F.2d 338, 340 n. 1 (2d Cir.1977); see 15 U.S.C. § 1053. Except where otherwise noted, we make no distinction between the law governing these different marks.
. Appellant does not explain how the appearance of certain trade names in an unspecified database constitutes a relevant "use” of these names. Nevertheless, appellee has not raised the issue, so we may assume that this listing is of the type described in
Lloyd’s,
. Judge Chin appeared to categorize the relevant consumers as "wealthy individuals and institutions desiring investment opportunities,” and later referring to "sophisticated investors.”
Lane,
. Appellee does not contend that Judge Chin was powerless to grant the motion to amend under these procedural circumstances, and we have not considered that issue. ■