Paleteria La Michoacana, Inc. v. Productos Lacteos Tocumbo S.A

United States Court of Appeals
FOR THE DISTRICT OF COLUMBIA CIRCUIT

Argued February 6, 2018 Decided August 10, 2018

No. 17-7075

PALETERIA LA MICHOACANA, INC., A CALIFORNIA
CORPORATION, ET AL.,
APPELLEES

v.

PRODUCTOS LACTEOS TOCUMBO S.A. DE C.V., A MEXICAN
CORPORATION,
APPELLANT

Appeal from the United States District Court
for the District of Columbia
(No. 1:11-cv-01623)

Martin B. Schwimmer argued the cause for appellant.
With him on the briefs were Lauren B. Sabol, Lauren B.
Emerson, Lori L. Cooper, and John L. Welch.

Laura L. Chapman argued the cause for appellees. With
her on the brief were Toni Qiu and Paul Werner.

Before: GRIFFITH and PILLARD, Circuit Judges, and
EDWARDS, Senior Circuit Judge.

Opinion for the Court filed by Circuit Judge PILLARD.
 2
PILLARD, Circuit Judge: Paletas are frozen, fruit-based
Mexican-style desserts akin to popsicles. Two vendors of
paletas, one based in Mexico and one in the United States,
assert conflicting trademark and false-advertising claims over
words and images they use in their competing paleta sales in
the United States. Productos Lacteos Tocumbo (Prolacto) is a
Mexican paleta company whose owners claim their ancestor
started the first paleteria in the Mexican state of Michoacán in
the 1940s. Paleteria La Michoacana (PLM) is another paleta
company, started by two Mexican-American brothers with
pushcarts in northern California in the 1990s. Today PLM sells
paletas in the United States through major retail outlets. The
two companies now find themselves toe-to-toe, both selling
their wares in certain U.S. markets using variants of the name
“La Michoacana” (meaning “the Michoacán woman”) and an
image of a girl in traditional dress holding a paleta or ice cream
cone (the “Indian Girl”). Broadly speaking, the parties dispute
whether Prolacto or PLM, if either, owns the contested phrase
and image—and, accordingly, which paleta company, if either,
unfairly competed or otherwise infringed the other’s trademark
rights.

Prolacto and PLM disagree about the key evidence and
events that determine ownership and infringement. As
Prolacto sees it, PLM’s adoption of the “La Michoacana” name
and Indian Girl logo, the latter of which PLM registered as its
own in the United States, is culturally exploitative. Prolacto
insists that it has long sold paletas in Mexico under the name
and image of “La Michoacana.” The founders of competitor
PLM first encountered the mark, says Prolacto, when they
visited Mexico before opening their own paleta business in the
United States. On Prolacto’s account, PLM, acting in bad faith,
appropriated the marks, along with the associated goodwill and
reputation Prolacto had developed over decades, and passed
them off here as PLM’s own.
 3
Prolacto unsuccessfully sought to register certain marks
with the United States Patent and Trademark Office, but
Prolacto did manage to persuade the Trademark Trial and
Appeal Board to cancel the registration of one of PLM’s marks,
an updated version of the Indian Girl encircled by the words
“La Indita Michoacana.” PLM, in turn, challenged the Board’s
cancellation order in district court, and added fresh claims that
a Prolacto version of the Indian Girl logo was invalid and
infringed PLM’s Indian Girl marks. Prolacto counterclaimed,
charging that PLM’s uses of related “La Michoacana” and
Indian Girl marks amounted to unfair competition in violation
of the Lanham Act.

After discovery, cross-motions for summary judgment,
and a thirteen-day bench trial, the district court largely held in
PLM’s favor, except that it affirmed the Trademark Board’s
cancellation of PLM’s La Indita Michoacana mark, a decision
not contested here. The court held that Prolacto infringed
PLM’s Indian Girl marks by using similar marks in its own
United States sales. As for Prolacto’s counterclaims, the court
held in PLM’s favor. Relying on the sovereign-specific nature
of trademark law, the court concluded PLM’s use of “La
Michoacana” and the Indian Girl in the United States did not
infringe any Lanham Act rights of Prolacto, which asserted
claims largely based on its prior use of the disputed words and
images in Mexico. For the most part, Prolacto was not the first
to use the marks in the United States. The only exception was
the phrase “La Michoacana,” which Prolacto had used in the
Houston market before PLM adopted it. But the court found
that phrase, rather than being uniquely associated with
Prolacto’s paletas, was a cultural commonplace in Mexican
paleta sales; in Mexico, the phrase is generally associated with
paletas much as, in the United States, a red, white, and blue
striped pole denotes barbershop service rather than any one
brand of barber. As such, Prolacto could claim no exclusive
 4
right to the phrase. Because we find neither any error of law,
nor any clear error in the district court’s findings of fact, we
affirm. 1

I. Background

A. Factual Context

By its own account, Prolacto is the modern standard bearer
of a tradition of paleta sales originating at “La Michoacana”
paleteria in Tocumbo, Michoacán in the 1940s. See Paleteria
La Michoacana, Inc. v. Productos Lacteos Tocumbo S.A. de
C.V., 188 F. Supp. 3d 22, 64-65 (D.D.C. 2016). 2 But the
Mexican Prolacto corporation was not founded until 1992. Id.
at 65. It began using the “Indian Girl” design, a version of
which is depicted below, “[a]t some point roughly between
1992 and 1995” in some of its paleterias in Mexico and on the
packaging of its products. Id. at 65.

1
Throughout, we refer to the disputed phrase “La Michoacana”
and disputed Indian Girl logos as “marks” for ease of reference rather
than to represent the legal conclusion that either is a protectable
trademark.
2
For the full findings of fact that pertain to all of the claims the
parties initially levied against each other, see 188 F. Supp. 3d at 38-
86. We recount only those facts pertinent to the issues appealed, and
 5
Of the paleterias Prolacto now owns or operates in Mexico,
some, but not all, use “La Michoacana” or variants involving
“Michoacán” in their advertising and branding, advertise with
the “Indian Girl” logo, or both. Id. Many other Paleterias in
Mexico, unrelated to Prolacto, also sell under the Indian Girl
design, the name “La Michoacana,” or both. Id. (Prolacto
contends those other vendors are in violation of its Mexican
trademark rights.)

PLM, the American paleta company founded by Mexican
immigrant brothers Ignacio and Ruben Gutierrez, began selling
its paletas in California in 1991. Id. at 40-41. In preparation
to open PLM, they returned to Mexico in 1990 to learn about
paleta production and purchase manufacturing equipment. Id.
at 39. The brothers saw what Ignacio described as “over a
thousand” paleterias named “La Michoacana,” many “distinct
from each other in terms of appearance.” Id. at 42. In hopes
of evoking traditional Mexican paletas in potential customers’
minds, see id. at 48, the brothers named their company
“Paleteria La Michoacana.” The district court found, based on
Ignacio Gutierrez’s testimony, that “[a]t the time that they
adopted the marks . . . they did not believe that, in Mexico, the
terms ‘La Michoacana’ or ‘Michoacana’ denoted a single
source of product.” Id. at 42. Instead, they understood the
words to refer, not to any specific paleta brand, but to a genre—
Michoacán paletas—much as New York cheesecake or Philly
cheesesteak denote food types rather than specific makers or
sources. Id. at 42, 48; see also id. at 84-85. The brothers also
sold their paletas under an Indian Girl mark. The district court
found that, just as they did not view the words “La
Michoacana” as referencing a particular brand, the Gutierrez

rely on the district court’s findings of fact in doing so unless
otherwise noted.
 6
brothers “did not . . . believe that, in Mexico, the [Indian Girl]
mark denoted a single source of product.” Id. at 48.

PLM’s business grew quickly in the United States. PLM
was, by 1999, using “La Michoacana” and its version of the
Indian Girl mark in interstate commerce, id. at 45, and the
company now sells paletas and ice cream in approximately
thirty states, id. at 38. Ignacio bought Reuben’s stake to
become PLM’s sole owner in 1999. Id. at 39, 40. PLM had by
2005 registered both its Indian Girl with paleta and Indian Girl
with ice cream cone marks with the United States Patent &
Trademark Office:

Id. at 48. At around the same time, PLM also began to
advertise its products with the following statement or its
equivalent: “La Michoacana is a family company founded in
Tocumbo, Michoacán in the 1940’s. Since then, we’ve
continued to make premium ice cream, fruit bars and drinks
that give the flavor and tradition of Mexico. Distinguish us by
our logo.” Id. at 61. The district court noted that PLM had
ceased using any such “Tocumbo Statement” by the time this
dispute made its way to district court. Id. at 71 & n.23.

Prolacto, for its part, opened its first U.S. store in 2000
through a licensee in Homestead, Florida. Id. at 69. Prolacto
licensees then opened several additional American outposts, in
Texas, Northern California, and North Carolina. Id. at 64.
 7
At the time this dispute arose, Prolacto and PLM both sold
paletas with the mark “La Michoacana” and an Indian Girl logo
in the United States, but those sales overlapped only in two
areas. The first was Northern California, where PLM’s use of
the disputed name and logo predated Prolacto’s by at least a
decade. Id. at 81; id. at 39. The parties’ second overlapping
market was Houston, Texas. Prolacto was the first to enter the
Houston market through a licensee in 2002, and to use the
disputed phrase “La Michoacana” there. Id. at 41-42, 48.
Although PLM did not enter that market until 2005, it used both
the name “La Michoacana” and the Indian Girl mark right from
the start of its Houston paleta sales. See id. at 109. Prolacto
did not begin to use the Indian Girl mark in its Houston-area
paleta sales until some undetermined time after 2005, id. at 75-
76, so PLM’s use of the Indian Girl marks in Houston predated
Prolacto’s there.

B. Procedural Context

Prolacto and PLM’s overlapping marks became a point of
legal contention in 2011, when the Trademark Trial and Appeal
Board granted Prolacto’s petition to cancel PLM’s registration
of an Indian Girl logo (closely resembling Prolacto’s),
encircled by the words “La Indita Michoacana.” After
unsuccessfully petitioning the Board to reverse its decision,
PLM challenged it in federal district court under 15 U.S.C. §
1071(b). See 188 F. Supp. 3d at 29. This appeal arises from
the protracted and acrimonious litigation that grew out of that
one original claim.

PLM joined various claims in its suit challenging the
Board’s invalidation of its La Indita Michoacana mark, and
Prolacto responded with a handful of counterclaims. The
district court summarized:
 8
PLM’s Second Amended Complaint alleges four
causes of action: Count I seeks reversal of the
[Trademark Board’s] decision to cancel the
registration of PLM’s LA INDITA MICHOACANA
mark and [also seeks] denial of PROLACTO’s
cancellation petition; Count II seeks a declaration that
there is no likelihood of confusion between PLM’s
LA INDITA MICHOACANA mark and various
marks asserted by PROLACTO on the basis of their
common usage of the word “MICHOACANA”;
Count III alleges that PROLACTO’s use of its Indian
Girl mark infringes three of PLM’s registered marks
under 15 U.S.C. § 1114 . . .; and Count IV seeks to
cancel PROLACTO’s registration of certain marks
containing the name LA FLOR DE MICHOACAN if
a likelihood of confusion is found between those
marks and PLM’s marks. . . .
PROLACTO, in turn, filed seven counterclaims:
Counterclaim Count I alleges that PLM infringed its
registered LA FLOR DE MICHOACAN [phrase] and
design mark under 15 U.S.C. § 1114(1); Counterclaim
Count II alleges trademark infringement, unfair
competition, passing off, false advertising, false
association, and false designation in violation of 15
U.S.C. § 1125(a); Counterclaim Count III alleges
trademark infringement of the District of Columbia’s
common law; Counterclaim Count IV alleges
trademark dilution under 15 U.S.C. § 1125(c); and
Counterclaim Counts V, VI, and VII seek cancellation
of two of PLM's registered marks due to fraud and
abandonment.
Id. at 29-30.
 9
Over the course of roughly three years, the district court
reviewed all eleven claims and counterclaims, ultimately
holding a bench trial and issuing a comprehensive opinion
based in well grounded credibility determinations and
exhaustive findings of fact. It resolved Count I in Prolacto’s
favor, leaving the Trademark Board’s cancellation of PLM’s
La Indita Michoacana mark in place, id. at 101; it resolved
Counts II and III in PLM’s favor, id. at 103, 107, and dismissed
Count IV as moot, id. at 108. As for Prolacto’s counterclaims,
the court resolved all but Counterclaim II in PLM’s favor at
summary judgment, id. at 31, but ultimately entered judgment
for PLM on that count, too, after trial, id. at 110-11, 115.

Prolacto’s appeal challenges the district court’s adverse
resolution of only three of those claims: first, Prolacto’s false
association claim (Counterclaim II); second, its false
advertising claim (Counterclaim II); and finally, PLM’s
trademark infringement claim (Count III). Those three claims
arise from the Lanham Act, 15 U.S.C. § 1051 et seq., a common
source of federal trademark claims. See Barton Beebe,
TRADEMARK LAW 14-15 (2017). The Lanham Act provides a
right of action for unfair competition in relation to both
registered and unregistered marks. Prolacto, whose marks are
not registered in the United States, brought its claims against
PLM under Section 43(a) of the Lanham Act, 15 U.S.C.
§ 1125(a), charging trademark infringement via PLM’s false
association of its products with Prolacto’s, while PLM seeks to
defend the validity of its registered marks under the Act’s
Section 32(1), 15 U.S.C. § 1114(1), against consumer
confusion from Prolacto’s unauthorized use.
 10
II. Prolacto’s Lanham Act Claims Against PLM

Prolacto contends the district court erred in ruling for PLM
after trial on Prolacto’s false association and false advertising
claims. Prolacto’s marks are not registered in the United
States, but because use in commerce, not mere registration, is
the sine qua non of a trademark right under the Lanham Act,
those marks could still be protected against infringement here.
The conditions of that protection are laid out in Section 43(a)
of the Act:

Any person who, on or in connection with any goods
or services, or any container for goods, uses in
commerce any word, term, name, symbol, or device,
or any combination thereof, or any false designation
of origin, false or misleading description of fact, or
false or misleading representation of fact, which—
(A) is likely to cause confusion, or to cause
mistake, or to deceive as to the affiliation,
connection, or association of such person with
another person, or as to the origin, sponsorship, or
approval of his or her goods, services, or
commercial activities by another person, or
(B) in commercial advertising or promotion,
misrepresents the nature, characteristics, qualities,
or geographic origin of his or her or another
person’s goods, services, or commercial activities
shall be liable in a civil action by any person who
believes that he or she is or is likely to be damaged by
such act.

15 U.S.C. § 1125(a)(1). Section 43(a) thereby provides for
“two distinct bases of liability”—first, in subsection (A), false
association, also known as unfair competition or trademark
 11
infringement and, second, in subsection (B), false advertising.
See Lexmark Int’l v. Static Control, 134 S. Ct. 1377, 1384
(2014).

Insofar as Prolacto appeals from decisions the district
court made at summary judgment, our review is de novo. See
Estate of Coll-Monge, 524 F.3d 1341, 1346 (D.C. Cir. 2008).
We review the district court’s findings of fact rendered after
the bench trial with deference and disturb them only if we
detect clear error. See Anderson v. City of Bessemer City, N.C.,
470 U.S. 564, 573-74 (1985); ALPO Petfoods, Inc. v. Ralston
Purina Co., 913 F.2d 958, 964-65 (D.C. Cir. 1990); Fed. R.
Civ. P. 52(a). “When findings are based on determinations
regarding the credibility of witnesses, Rule 52(a) demands
even greater deference to the trial court’s findings; for only the
trial judge can be aware of the variations in demeanor and tone
of voice that bear so heavily on the listener’s understanding of
and belief in what is said.” Anderson, 470 U.S. at 575; see
ALPO Petfoods, 913 F.2d at 965. To the extent this appeal calls
for review of the district court’s legal conclusions, our
consideration is de novo. See United States v. Cook, 594 F.3d
883, 886 (D.C. Cir. 2010).

A. False Association Based on PLM’s Use of
“La Michoacana”

Prolacto first contends that the district court erred in failing
to hold PLM liable for false association based on PLM’s use of
the words “La Michoacana” to sell paletas primarily in the
Houston, Texas-area market. To make out a false association
claim, Prolacto must establish a few key elements: (1) PLM
uses the mark in U.S. commerce in connection with the sale of
goods or services; (2) PLM’s use of its mark is likely to cause
consumer confusion; and (3) PLM’s use will likely damage
Prolacto. See 15 U.S.C. § 1125(a)(1)(A); J. McCarthy,
 12
MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION § 27:13
(5th ed. 2018) [hereafter McCarthy]. Prolacto can only
establish the third element, damage, upon making a
prerequisite showing that it has a legally cognizable
commercial interest that would be harmed by infringement.
See Lexmark, 134 S. Ct. at 1388-90; McCarthy § 32:12. A
protectable interest only attaches to a term that is sufficiently
distinctive to merit trademark protection, see Blinded Veterans
Ass’n v. Blinded Am. Veterans Found., 872 F.2d 1035, 1039
(D.C. Cir. 1990) (Blinded Veterans), and upon a showing that
the claimant is that term’s first, or “prior,” user, John C. Flood
of Va., Inc. v. John C. Flood, Inc., 642 F.3d 1105, 1109 (D.C.
Cir. 2011).

The parties do not dispute that PLM has used
“Michoacana” in commerce and that consumers may confuse
Prolacto’s and PLM’s uses of the words “La Michoacana.”
Our review focuses, then, on whether “La Michoacana” is a
sufficiently distinctive mark to merit trademark protection, and
whether Prolacto established priority in use of that mark. Only
upon establishing both distinctiveness and priority could
Prolacto make out its false association claim. We affirm the
district court’s posttrial finding that Prolacto has done neither,
and that its false association claim accordingly fails.

First, the district court committed no error in finding that
Prolacto failed to establish that the “La Michoacana” mark is
sufficiently distinctive. 188 F. Supp. 3d at 83-86. Prolacto
primarily contends that PLM would not have adopted “La
Michoacana” but for its value as a marker of Prolacto’s brand.
That argument, however, is belied by established law, logic,
and fact.

The value of “La Michoacana” only stems from Prolacto
if the mark is distinctive to Prolacto as a paleta source.
 13
Distinctive marks are those that designate their source, i.e., that
signal that the goods come from “a particular trader,” Matal v.
Tam, 137 S. Ct. 1744, 1751 (2017) (quoting United Drug Co.
v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918)), and only
distinctive marks garner the protection of trademark law, see
Blinded Veterans, 872 F.2d at 1039. In other words, a source’s
trademark protection is only a shield against a putative
infringer’s use of terms or images to the extent that such use
falsely suggests to buyers that they are purchasing the source’s
product. When a mark is not distinctive to a source, it sends no
such signal.

Whether a mark is distinctive—and how distinctive it is—
are questions of fact. See McCarthy §§ 11:3, 15:29. In
measuring distinctiveness, “[c]ourts have identified four
general categories: (1) generic, (2) descriptive, (3) suggestive,
and (4) arbitrary or fanciful,” that map onto a spectrum of
increasing distinctiveness. Blinded Veterans, 872 F.2d at 1039;
see also McCarthy §11:2.

• “Generic” marks, which describe a kind of product,
have no distinctiveness at all, and therefore merit no
trademark protection. See Blinded Veterans, 872 F.2d
at 1039; see also McCarthy § 11:1. For example,
“Frozen Dessert” as a brand name for ice cream or
“Aspirin” for pain medication would be generic marks,
as they simply name the genre of their products. See
Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698
F.2d 786, 790 (5th Cir. 1983).
• “Descriptive” marks are more specific, but not
inherently so. They are distinctive—and thus
protected—“only upon proof of secondary meaning—
i.e., upon proof that the public recognizes only one
source of the product or service.” Blinded Veterans,
872 F.2d at 1039-40; see Two Pesos, Inc. v. Taco
 14
Cabana, Inc., 505 U.S. 763, 768-70 (1992); McCarthy
§ 11:16. A descriptive mark—like “Investacorp” to
name a business that provides advice on corporate
investment opportunities, see Investacorp, Inc. v.
Arabian Inv. Banking Corp., 931 F.2d 1519, 1523-24
(11th Cir. 1991)—would acquire secondary meaning
only if consumers observing that mark identified it with
a specific seller. Determining whether a descriptive
mark has secondary meaning, and is thus protected,
depends on a factual inquiry whether consumers in the
relevant purchasing public associate the mark with a
specific producer. Such association presumably could
be shown, for example, in the case of American
Airlines.

The remaining two categories of marks are inherently
distinctive such that they do not require proof of acquired
distinctiveness to garner trademark protection. Whether a
mark is inherently distinctive depends on the relationship
between that mark and the product it is used to sell:

• “Suggestive” marks “suggest[], rather than describe[],
some particular characteristic of the goods or service to
which [they] appl[y] and require[] the consumer to
exercise the imagination to draw a conclusion as to the
nature of the goods and services.” Zatarains, 698 F.2d
at 791. Suggestive marks, in other words, “indirectly
convey an impression of the products or services,” so
are on their own distinctive enough in how they relate
to the source to obviate the need for the party claiming
the mark to make a showing of secondary meaning.
Blinded Veterans, 872 F.2d at 1040; see McCarthy
§ 11:62. Examples of marks held to be suggestive
include “Chicken of the Sea” canned tuna, see Gen.
Shoe Corp. v. Rosen, 111 F.2d 95, 98 (4th Cir. 1940),
 15
and “Penguin” refrigerators, see Union Nat. Bank of
Texas, Laredo, Tex. v. Union Nat. Bank of Texas,
Austin, Tex., 909 F.2d 839, 845 (5th Cir. 1990).
• Similarly, “arbitrary” marks—which have “no intrinsic
connection” to the product they describe, like Apple
computers—and “fanciful” marks—neologisms like
Kodak coined to name a specific product, see
Zatarains, 698 F.2d at 791—are the most distinctive,
and require no proof of secondary meaning. Blinded
Veterans, 872 F.2d at 1040.

The distinctiveness of a mark is typically determined only in
relation to a given product, with the mark’s categorization
dependent on the nature of that relationship. “For example, the
mark BRILLIANT may be ‘descriptive’ on diamonds,
‘suggestive’ on furniture polish, and ‘arbitrary’ on canned
applesauce.” McCarthy § 11:64.

The district court ultimately found that “La Michoacana”
was not a sufficiently distinctive mark to merit trademark
protection. At summary judgment, the court explained it was
“somewhat unclear what category the parties believe the marks
fall into but, given their focus on the secondary meaning
inquiry, it appears that they both agree that the marks are not
inherently distinctive and instead are better defined as
geographically descriptive.” 69 F. Supp. 3d at 210. But the
court declined to grant either party summary judgment on the
issue of secondary meaning, finding that substantial questions
of material fact remained. Id. at 211-12.

Prolacto objected that the court had misconstrued its
argument: It insisted that “La Michoacana” was an arbitrary
rather than a descriptive mark. 188 F. Supp. 3d at 84.
Following trial, the district court addressed the question
whether “La Michoacana” was an inherently distinctive mark,
 16
and found Prolacto’s position factually untenable. An arbitrary
mark is one that does not describe the product it sells at all, see
McCarthy § 11:11, but “La Michocana,” used as a name for a
paleta company, captured the association of paletas with the
state of Michaocán. 188 F. Supp. 3d at 83-86, 111. Based on
ample trial evidence, including testimony about the ubiquity of
paleta shops in Mexico referring to their wares with the term
“Michoacana,” the court found that the term evoked a type of
product generally linked to the named locale, much like the
names Philly cheese steak or Chicago-style pizza, so did not
have an arbitrary relationship to paletas. Id. at 42, 85-86.

The district court further held that Prolacto had not offered
proof that “La Michoacana” had acquired secondary meaning,
i.e. that consumers identified “La Michoacana” with Prolacto
itself; consequently, “La Michoacana” could not qualify for
trademark protection as a descriptive mark. The court
explained that, in making its case, Prolacto barely offered any
of the “commonly considered” evidence for secondary
meaning, such as “survey evidence, the length and manner of
use of the name, the nature and extent of advertising and
promotion of the name, the volume of sales, the instances of
actual confusion.” Id. at 85. While Prolacto identified a few
instances of confusion between Prolacto and PLM’s products
in their overlapping markets, Prolacto did not offer any
testimony or other support for the proposition that it was the
words “La Michoacana,” as opposed to imaging on the
packages, for example, that caused the confusion. Id. at 86.
Further, the court found, much of the testimony offered to show
consumer confusion came from “witnesses [who] lacked
credibility due to their close family relationship with
PROLACTO’s lead counsel,” and even those witnesses’
testimony suggested they viewed the name “La Michoacana”
as a referring to a type of product rather than a single brand.
Id. at 86 & n.46. Prolacto thus failed to establish that
 17
consumers identified the mark “La Michoacana” as distinctive
to Prolacto. Id. at 86.

Prolacto’s first contention on appeal—that “the error here
is that the term [‘La Michoacana’] was never shown to be
[merely] descriptive,” see Appellant’s Br. at 35 n.16; see also
id. at 34-35, 37—places the burden of proof on the wrong party.
Distinctiveness is an element of Prolacto’s false association
claim. Establishing that its mark is inherently distinctive, not
just descriptive, was therefore Prolacto’s burden to bear. The
district court did not err in requiring Prolacto to make out that
essential element of its own false association claim.

In holding that “La Michoacana” was not a distinctive
mark, the district court noted that “[h]ere, the same evidence
that would be required to establish secondary meaning would
also resolve whether ‘Michoacana’ is arbitrary or descriptive.”
Id. at 95. To the extent that the district court intended thereby
to state a general rule of law, it was incorrect. A mark may
well be inherently distinctive even if it lacks secondary
meaning. A factual record, typically including surveys or other
empirical evidence, is necessary to show secondary meaning
(i.e., that consumers identify a mark with a specific producer).
Inherent distinctiveness, however, focuses on the mark’s link
to the product rather than its producer, and may be evident on
consideration of the mark and the product themselves. We
need not inquire whether the district court’s error in eliding the
distinct analytic categories affected the judgment, however,
because any challenge on that ground was forfeited by
Prolacto’s failure to plainly raise the point on appeal. See Hall
v. District of Columbia, 867 F.3d 138, 152 n.1 (D.C. Cir. 2017).

Finally, Prolacto also asserts that PLM’s appropriation of
the words “La Michoacana” is itself evidence that the mark is
distinctive. That argument is logically flawed. It does not
 18
follow that mere appropriation of a phrase would itself be
evidence of that phrase’s distinctiveness. A term may usefully
signify a genre without signifying a brand—as in the cases of
New York-style cheesecake or Tex-Mex cuisine. Further,
Prolacto points to no specific evidence of distinctiveness that
the district court overlooked. The evidence the court did
consider amply supported its factual determinations that the
phrase “La Michoacana” was neither inherently distinctive nor
had acquired distinctiveness. See 188 F. Sup. 3d at 85-86. To
the extent that those findings turn at least in part on the district
judge’s credibility determinations, we are especially loath to
invalidate them. See ALPO Petfoods, 913 F.2d at 965.

The district court’s findings that “La Michoacana” lacks
distinctiveness—whether inherent or acquired—are not
erroneous, let alone clearly so. Prolacto accordingly cannot
establish false association with respect to the “La Michoacana”
marks under Section 43(a) of the Lanham Act, and we affirm
the district court’s dismissal of that claim.

Second, even if “La Michoacana” were distinctive and thus
potentially subject to trademark, Prolacto’s challenge would
largely fail because, as the district court found, Prolacto did not
establish its “priority of use” for the “La Michoacana” mark in
most U.S. markets. In the United States, a party acquires
trademark rights by being the first to use the mark in U.S.
commerce. See McCarthy § 16:1; see also Estate of Coll-
Monge, 524 F.3d at 1346-47. The United States subscribes to
the “territoriality doctrine,” under which “a trademark is
recognized as having a separate existence in each sovereign
territory in which it is registered or legally recognized as a
mark.” McCarthy § 29:1; accord ITC Ltd. v. Punchgini, Inc.,
482 F.3d 135, 155 (2d Cir. 2007). Priority of use in the United
States is what triggers protection under U.S. law, and prior use
 19
of a mark outside the United States ordinarily does not create a
trademark right here.

Prolacto initially claimed that PLM violated the Lanham
Act’s prohibition on false association by using both the “La
Michoacana” and Indian Girl marks in Houston, Texas,
Florida, and Northern California. At summary judgment,
however, the district court held that the undisputed evidence
showed PLM did not do business in Florida, eliminating the
possibility that Prolacto suffered infringement in that market,
Paleteria La Michoacana, Inc. v. Productos Lacteos Tocumbo
S.A. de C.V., 69 F. Supp. 3d 175, 207 (D.D.C. 2014); it further
held that PLM’s use of the marks in the Northern California
market—and even its registration of those marks—
undisputedly predated Prolacto’s entry into that market by
several years, defeating Prolacto’s infringement claim in
Northern California, id. at 207-08. Prolacto’s false association
claim was thereby limited to the Houston market. Id. After
trial, the court found that Prolacto could not establish its
priority, even within the Houston market, with respect to the
Indian Girl logo; Prolacto did not use that mark in Houston
until after PLM started doing so in 2005. 188 F. Supp. 3d at
76-77, 109. (As discussed above, Prolacto did establish prior
use of “La Michoacana” in the Houston market, but its priority
gained it no protection because Prolacto failed to show “La
Michoacana” was distinctive, see supra pp. 12-18).

Prolacto concedes that PLM is the prior user of all of the
contested marks in the relevant United States markets, save “La
Michoacana” in the Houston area. Prolacto does not challenge
the district court’s factual determinations regarding PLM’s
priority in the other U.S. markets, whether those
determinations result from the court’s legal holdings as to the
undisputed facts at summary judgment, or from its factual
findings on the full trial record. Instead, Prolacto contends only
 20
that it has trademark rights in the United States based on its
own undisputed prior use in Mexico.

Prolacto makes two alternative arguments, each of which
would require us to decide a matter of first impression.
Principally, Prolacto urges us to read Section 43(a)(1)(A)’s
protection against false association not to depend on any proof
of Prolacto’s prior use in the United States, as the Fourth
Circuit recently did in Belmora LLC v. Bayer Consumer Care
AG, 819 F.3d 697, 705-08 (4th Cir. 2016). The Belmora court
reasoned that “the plain language of § 43(a) does not require
that a plaintiff possess or have a trademark in U.S. commerce
as an element of the cause of action,” id. at 706; instead, a
plaintiff that held the same mark in Mexico could simply show
that defendant’s deceptive use of the mark in U.S. commerce
was likely to injure it, at least where the Mexican mark had
given rise to a reputation in the United States. Id. at 706, 708-
09. Prolacto argues, along those lines, that PLM’s use of the
“La Michoacana” mark in U.S. commerce injured Prolacto by
trading on its goodwill, which Prolacto accrued in Mexico
before entering the U.S. market. Prolacto charges that, in doing
so, PLM usurped some of Prolacto’s business by passing off its
wares in the United States as Prolacto’s. See Appellant’s Br.
at 27-28 & n.13.

We need not pass on Belmora’s reading of Section
43(a)(1)(A), however, because Prolacto has not established an
injury to its commercial sales or prospects—a fact Prolacto
acknowledges. See Oral Arg. Tr. 7:10-8:2. The district court
noted that “PROLACTO offered no evidence, for example,
concerning any loss of sales from customers who bought
PLM’s products in the United States in lieu of PROLACTO’s
products in Mexico. Nor did it offer any evidence of consumer
confusion in Mexico concerning its products, any credible
evidence showing a crossover of the parties’ customers
 21
between the United States and Mexico, or any other evidence
suggesting that PROLACTO suffered any injury in the
Mexican market.” 188 F. Supp. 3d at 111 n.66. Because
Prolacto had a full opportunity to develop the factual record,
we decline its request that we either presume the relevant injury
or remand for further factual development in the district court.

As for Prolacto’s second alternative theory of unfair
competition loosely based on the Tea Rose-Rectanus exception
to the prior-use principle, we reject Prolacto’s contention that
the exception is “[c]onceptually similar” to its claim. See
Appellant’s Br. 50. That exception stems from Hanover Star
Milling Co. v. Metcalf, 240 U.S. 403 (1916) (Tea Rose), and
United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918)
(Rectanus). The Supreme Court in the Tea Rose and Rectanus
cases recognized a regional exception to domestic trademark
rights’ national scope: A junior user could have regional rights
over a senior user in the United States where the junior’s use
occurred in areas remote from the senior’s use. Following the
parties’ lead, we assume, without deciding, that despite the
intervening changes in interstate commerce, transportation,
and internet sales, this early twentieth-century exception has
traction in the twenty-first century marketplace. We can so
assume because, by its own terms, the Tea Rose-Rectanus
exception is inapplicable to this case. Prolacto is not the senior
user within the United States. See 188 F. Supp. 3d at 88.

Despite this clear difference, Prolacto views Tea Rose-
Rectanus as helpful because the rights recognized under the
exception implicitly depend on the good faith of the junior’s
use and, Prolacto insists, PLM appropriated the marks in bad
faith. Prolacto thus deploys Tea Rose-Rectanus’s general
concept to cast itself as an internationally senior user and then
to suggest that, under Tea Rose-Rectanus, we should hold any
 22
regional right PLM might have to be defeated as derived from
bad faith appropriation. See Appellant’s Br. at 25, 50.

Prolacto’s theory is in tension with the territorial
foundations of trademark law, under which its prior use in
Mexico does not establish priority in United States markets.
Even on its own terms, the theory fails in light of the district
court’s finding that PLM’s adoption of the mark was not in bad
faith. See 188 F. Supp. 3d at 42, 86-92. Rather, the district
court found that when PLM adopted its marks it was unaware
of Prolacto and “did not believe that the term denoted a single
source of product in Mexico.” Id. at 91. 3

In sum, Prolacto’s false-association claim fails because
Prolacto has not established a right to the “La Michoacana”
mark or injury from PLM’s use sufficient to establish false
association in violation of Section 43(a) of the Lanham Act.
We thus affirm the district court’s entry of judgment for PLM
on that claim.

B. Prolacto’s Claim that PLM Engaged in
False Advertising

Prolacto next claims that PLM’s advertisements,
particularly its use of the Tocumbo Statement, violate the false
advertising prohibition of Section 43(a)(1)(B) of the Lanham
Act. To prevail in a false advertising suit under Section 43(a),
“a plaintiff must prove that the defendant’s ads were false or
misleading, actually or likely deceptive, material in their
effects on buying decisions, connected with interstate

3
Prolacto does not on appeal invoke the “well-known marks”
exception to territorial prior use principles. See Appellants’ Br. at
24. Compare Grupo Gigante SA DE CV v. Dallo & Co., 391 F.3d
1088 (9th Cir. 2004), with ITC Ltd. v. Punchgini, Inc., 482 F.3d 135
(2d Cir. 2007).
 23
commerce, and actually or likely injurious to the plaintiff.”
ALPO Petfoods, 913 F.2d at 964. The parties do not dispute
that the Tocumbo Statement was, in fact, false or misleading,
actually or likely deceptive, and connected with interstate
commerce. See 69 F. Supp. 3d at 216. Our review is therefore
confined to the elements of materiality and injury. As elements
of its false advertisement claim, injury and materiality are
Prolacto’s to prove. Prolacto has not carried that burden.

The district court did not err in concluding Prolacto failed
to prove a relevant injury. Reviewing all the facts before it, the
district court concluded that “PROLACTO offered little, if any,
evidence that any consumers even saw one of the [allegedly
false advertising] statements, let alone that any consumers
factored the statement into their decision whether to purchase
or not purchase PLM’s products.” 188 F. Supp. 3d at 62-63.
The court methodically surveyed all of the evidence Prolacto
offered to establish injury, starting with the Tocumbo
Statement.

First, in its effort to show that consumers were swayed by
the Tocumbo Statement, Prolacto offered testimony of a
paletas expert, Sam Quinones, who had taken several trips to
Mexican paleterias and written articles on the subject. Id. at
62. While Quinones testified that he had read the “small print”
on PLM’s paleta wrappers (which at certain times included the
Tocumbo Statement), he could not recall what it said; “[t]hus,”
the court concluded, “it is not even clear whether [he] read the
Tocumbo Statement, in any of its variations.” Id. The court
further noted that Quinones, who testified to spending fifteen
minutes reading the packaging of paletas, was far more
attentive than the average consumer—a fact that reinforced the
court’s conclusion that the average consumer was unlikely to
have been affected by the Statement. Id.
 24
Second, Prolacto introduced testimony of the company’s
counsel’s own family members in an effort to show the
Tocumbo Statement’s effect. Id. We defer to the court’s
credibility determination that their testimony was not reliable.

Third, Prolacto offered a “consumer survey,” the results of
which have little bearing on injury. Id. at 62-63. In that survey,
Prolacto’s expert asked consumers to read and interpret the
Tocumbo Statement. Id. The expert did not, however, “test the
materiality of the statement on consumers’ decision-making
processes” or attempt to replicate the environment of a
marketplace to “determine whether, for example, any
consumers would actually take the time to study PLM’s
product packaging and read about its purported history before
deciding whether to make a purchase.” Id. at 63. The court
reasonably concluded: “Simply put, there was no credible
evidence that the Tocumbo Statement has had, or would have,
any real impact on PROLACTO in any way.” Id.

Beyond the deficient evidence of injury stemming from
the Tocumbo Statement, the court found that PLM’s use of
other images and phrases in its advertising similarly had no
unlawfully injurious effect on Prolacto. Id. at 63-64, 112-15.
The name “La Michoacana,” for example, lacks
distinctiveness, and images of sand beaches are a common
advertising trope. Prolacto points to nothing in the record that
contradicts or even weakens the court’s findings and
conclusions, and we see no source of clear error.

Because the district court did not clearly err in finding a
lack of credible evidence of any injury, and Prolacto’s failure
to establish injury is fatal to its claim, we need not consider
additional arguments regarding materiality. See ALPO
Petfoods, 913 F.2d at 964. On this ground, we affirm the
district court’s conclusion that Prolacto has not established
 25
PLM’s use of the Tocumbo Statements and other advertising
materials constituted false advertising in violation of Prolacto’s
rights under Section 43(a)(1)(B) of the Lanham Act.

III. PLM’s Lanham Act Claim Against Prolacto’s
Use of Indian Girl Logos

Finally, Prolacto appeals the district court’s holding that it
infringed PLM’s trademark rights in the Indian Girl marks, in
violation of Section 32 of the Lanham Act. Section 32 protects
registered trademarks from infringing use. It provides:

Any person who shall, without the consent of the
registrant—
(a) use in commerce any reproduction, counterfeit,
copy, or colorable imitation of a registered mark in
connection with the sale, offering for sale,
distribution, or advertising of any goods or services
on or in connection with which such use is likely to
cause confusion, or to cause mistake
shall be liable in a civil action by the registration for
the remedies hereinafter provided.

15 U.S.C. § 1114(1). To establish a violation of Section 32,
the claimant must show (1) that it owned a registered mark (2)
which another person used in commerce, and that (3) such use
likely caused consumer confusion. See id.; see also McCarthy
§ 23:76. The parties do not dispute that PLM has used its marks
in commerce or that PLM’s and Prolacto’s Indian Girl marks
might be confused. See 188 F. Supp. 3d at 107. The issue here
is whether PLM owns the Indian Girl marks that Prolacto used.

PLM’s two Indian Girl marks are registered with the U.S.
Patent & Trademark Office, and have been since 2005. See id.
at 48. The fact of registration, under the Lanham Act, is itself
 26
“prima facie evidence of the validity of the registered mark and
. . . of the registrant’s ownership of the mark, and of the
registrant’s exclusive right to use the registered mark in
commerce on or in connection with the goods or services
specified in the registration subject to any conditions or
limitations stated therein.” 15 U.S.C. § 1115(a). PLM
sufficiently established its ownership by offering evidence of
the marks’ registration. And because proof of registration is
prima facie evidence of ownership, we need not consider the
merits of Prolacto’s challenge to the marks’ “incontestability”
under 15 U.S.C. § 1065. Regardless of whether that ownership
is incontestable, the evidence does not rebut the presumption
of PLM’s ownership. Accordingly, we affirm the district
court’s conclusion that Prolacto infringed PLM’s use of its
registered marks.

* * *

We find no merit in Prolacto’s remaining arguments,
including its objections to the district court’s denial of a right
to a jury trial on its equitable claim to an accounting of profits,
and to several evidentiary determinations and other orders
identified in the notice of appeal but not discussed in the
briefing. Accordingly, we affirm the district court’s entry of
judgment for PLM on Prolacto’s false association and false
advertising claims under Section 43(a) and PLM’s
infringement claim under Section 32(1).

So ordered.