Lack of Sales Defeats Infringement Claim

Even though a maker of custom vans obtained a trademark registration for “Work-N-Play,” the fact that the company made only one sale that didn’t even use the trademark prevented it from claiming infringement by another van maker using the term “Work and Play.”

The Seventh Circuit found that the term “Work-N-Play” was a “descriptive mark,” that is, something that merely describes the product category to which it belongs. Absent the mark obtaining a “secondary meaning,” there can be no infringement since it is not a legally protected trademark.

Custom Vehicles, Inc. registered the mark in 2000 to cover a van where the interior could be converted in about an hour from a mobile office to a camper or vice versa. It sold one such van in 2000 but did not use the name “Work-N-Play.” The following year, Forest River, Inc. began to build a towed van with a ramp door so that the owner could transport a motorcycle or snowmobile and repair it. Forest River named it “Work and Play.” It wasn’t until 2004 that Custom Vehicles sold six more vans.Both Custom Vehicles and Forest River promoted their products at recreational vehicle trade shows.

Custom Vehicles sued Forest River for trademark infringement. The trial court granted summary judgment for Forest River. The appellate court affirmed. Custom Vehicles argued that registration of a trademark carries a presumption of validity. Judge Posner disagreed, finding “the act of registration merely begins the process that leads to the presumption.”

“Bare registration is not enough,” Judge Poser wrote. “Trademarks cannot be ‘banked’ or ‘warehoused’-that is, you cannot register thousands of names, unrelated to any product or service that you sell, in the hope of extracting a license fee from sellers of products or services for which one of your names might be apt.” Since Custom Vehicles sold only one van, it was not enough to give the trademark the secondary meaning that is required for a “descriptive” mark.

Custom Vehicles, Inc. v. Forest River, Inc., Seventh Cir. No. 06-2009, February 7, 2007.