Intellectual Property Law

Though Geographically Descriptive, Claim Mark Was Suggestive Not Groundless

By Michael Atkins

STL posted on Sand Hill Advisors, LLC v. Sand Hill Advisors, LLC in January, after the Northern District of California granted summary judgment in favor of the defendant on plaintiff’s trademark infringement claims.

The case was interesting — two northern California companies both claiming rights in the same name, which the court ultimately found was geographically descriptive.

The prevailing defendant then sought attorney’s fees as an “exceptional” case because, in its view, plaintiff’s claims were groundless. For one thing, the defendant argued, how could plaintiff claim SAND HILL ADVISORS was suggestive when it admitted it adopted the name because of its proximity to Sand Hill Road?

The court found it wasn’t that simple.

“Defendant argues that Plaintiff lacked a reasonable basis for claiming that SAND HILL ADVISORS was suggestive or had acquired secondary meaning. As an initial matter, Defendant argues that since Plaintiff’s founders acknowledged choosing SAND HILL ADVISORS because of its geographical significance, i.e., the company’s then new location on Sand Hill Road in the heart of the Silicon Valley, Plaintiff was foreclosed from arguing that the SAND HILL ADVISORS mark was anything other than descriptive. However, the issue was not as simple as Defendant now purports it to be. As set forth in the Court’s summary judgment order, Defendant raised a number of potentially viable arguments to show that its mark is suggestive, notwithstanding Plaintiff’s acknowledgement. Though the Court ultimately rejected each of Plaintiff’s contentions, that alone does not support the conclusion that its position that the mark at issue was suggestive was frivolous.”

The court also found that plaintiff offered at least some evidence to support its alternative claim that its mark had acquired secondary meaning. 

“Defendant also asserts that Plaintiff lacked evidence to support its alternative claim that even if SAND HILL ADVISORS were descriptive, such mark had gained secondary meaning. ‘Secondary meaning can be established in many ways, including (but not limited to) direct consumer testimony; survey evidence; exclusivity, manner, and length of use of a mark; amount and manner of advertising; amount of sales and number of customers; established place in the market; and proof of intentional copying by the defendant.’ Defendant argues that Plaintiff presented no evidence to support its claim of secondary meaning. Not true. The record confirms that Plaintiff proffered evidence regarding it various marketing and promotional efforts using the SAND HILL ADVISORS name. Though ultimately concluding that such evidence was insufficient to establish a issue of fact regarding secondary meaning, the Court did not find that Plaintiff’s position was groundless or baseless.”

For these reasons, the court found the case was not “exceptional.”

The case cite is Sand Hill Advisors, LLC v. Sand Hill Advisors, LLC, __ F.Supp.2d __, 2010 WL 3703029, No. 08-5016 (N.D. Calif. Sept. 16, 2010).

Full post as published by Seattle Trademark Lawyer on September 28, 2010 (boomark / email).