PUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
GEORGE & COMPANY, LLC,
Plaintiff-Appellant,
v.
IMAGINATION ENTERTAINMENT
LIMITED; IMAGINATION HOLDINGS
PTY LTD.; IMAGINATION DVD,
INCORPORATED,
No. 08-1921
Defendants-Appellees,
and
JOHN DOE(S) 1-10,
Defendant.
Appeal from the United States District Court
for the Eastern District of Virginia, at Alexandria.
Leonie M. Brinkema, District Judge.
(1:07-cv-00498-LMB-TRJ)
Argued: May 12, 2009
Decided: July 27, 2009
Before WILKINSON and KING, Circuit Judges,
and HAMILTON, Senior Circuit Judge.
Affirmed by published opinion. Senior Judge Hamilton wrote
the opinion, in which Judge Wilkinson and Judge King
joined.
2 GEORGE & CO. v. IMAGINATION ENTERTAINMENT
COUNSEL
ARGUED: Mark S. Sommers, FINNEGAN, HENDERSON,
FARABOW, GARRETT & DUNNER, LLP, Washington,
D.C., for Appellant. William Francis Krebs, BEAN, KINNEY
& KORMAN, PC, Arlington, Virginia, for Appellees. ON
BRIEF: Douglas A. Rettew, Naresh Kilaru, FINNEGAN,
HENDERSON, FARABOW, GARRETT & DUNNER, LLP,
Washington, D.C., for Appellant. Christopher A. Glaser,
Heidi E. Meinzer, BEAN, KINNEY & KORMAN, PC,
Arlington, Virginia, for Appellees.
OPINION
HAMILTON, Senior Circuit Judge:
On May 21, 2007, George and Company, LLC (George)
brought this trademark infringement action against Imagina-
tion Entertainment Limited, Imagination Holdings PTY Lim-
ited, and Imagination DVD, Incorporated (collectively
Imagination), claiming that Imagination infringed upon
George’s trademark rights in "LCR" and "LEFT CENTER
RIGHT." The district court granted summary judgment in
favor of Imagination. George appeals, and we now affirm.
I
A
George is a limited liability New York corporation with its
principal place of business in Naples, Florida. It has marketed
and sold dice games, party games, board games, and related
entertainment products for more than a century.
Imagination is an Australian corporation with its headquar-
ters in Kent Town, Australia. It markets and sells dice games,
GEORGE & CO. v. IMAGINATION ENTERTAINMENT 3
board games, and related gaming products in several coun-
tries, including the United States.
Each of the parties markets and sells a generic dice game
(the Dice Game). Game play for the Dice Game is simple and
straightforward. At least three players are required, and each
player starts with three chips. The players then take turns roll-
ing three specially-marked dice. Each side of the dice is
marked with one of the following: the letter "L," the letter
"R," the letter "C," or a dot symbol. The number of L’s on the
roll indicates the number of chips to be passed to the player
to the left of the roller, the number of R’s indicates the num-
ber of chips to be passed to the player to the right of the roller,
and the number of C’s indicates the number of chips to be
placed in the center pot. Dots are neutral and do not require
the roller to pass his chips or place them in the center pot.
When a player has two or less chips in his possession, he rolls
the number of dice equivalent to the number of chips he pos-
sesses; for example, a player with two chips rolls two dice. A
player with no chips still plays, but on his turn he has to pass
the dice to the next player and hope that the rollers adjacent
to him, after their roll, pass him some chips. As the game
progresses, players gain and lose chips, while the number of
chips in the center pot increases. The Dice Game ends when
only one player has chips remaining, and that player is
declared the winner and is awarded the chips in the center pot.1
B
According to George, beginning some time in 1983, it
began to market and sell versions of the Dice Game under the
1
Understandably, neither party in this case claims that it has rights in the
Dice Game itself. The Dice Game, in one form or another, has existed for
many years under a variety of names. Moreover, two individuals unrelated
to this case filed a patent for a game ("Left, Center, Pot") almost identical
to the Dice Game, which was approved by the United States Patent and
Trademark Office (USPTO) on July 7, 1987. The patent expired on Octo-
ber 4, 2005 and was never challenged during its pendency.
4 GEORGE & CO. v. IMAGINATION ENTERTAINMENT
names "LCR" and "LEFT CENTER RIGHT." From 1983 to
1991, the game was sold in foil wrap, with either LCR or
LEFT CENTER RIGHT hand- written on the foil.2
Beginning in 1992, George began to market and sell its ver-
sion of the Dice Game exclusively under the LCR name. The
parties agree that George intended LCR to be an abbreviation
of LEFT CENTER RIGHT. George owns registered trade-
marks for LCR and a related rolling-dice design (the Rolling
Dice Design).3 George never sought to register the mark
LEFT CENTER RIGHT.
At the time George initiated this trademark infringement
action, it sold its LCR game in two forms, either in cardboard-
backed blister packaging or in a plastic tube hanging from a
rack.4 The cardboard-backed blister packaging and the card-
board on the display rack are similar in all material respects.5
They are predominately white in color, and contain a ™ des-
ignation following the Rolling Dice Design and a notice that
"LCR ™ is a Trademark of George & Co."
Several features of the cardboard-backed blister packaging
are worthy of note. First, the packaging prominently displays
the name of the Dice Game through the Rolling Dice Design.
The Rolling Dice Design depicts the faces of three dice in
horizontal succession, with the face of the first dice contain-
ing an "L," the second a "C," and the third an "R." In the
2
We accept, for purposes of summary judgment, that George marketed
and sold a version of the Dice Game under the name LEFT CENTER
RIGHT between 1983 and 1991. We note, however, that the evidence sup-
porting this fact comes only from an affidavit of George’s president, Peter
Smilanich. The record contains no physical evidence to support Smi-
lanich’s averment, e.g., product pictures, packaging designs, etc.
3
An illustration of the Rolling Dice Design is set forth in Appendix A
to this opinion.
4
George began offering LCR in these forms of packaging in 1992.
5
An illustration of the LCR cardboard-backed blister packaging is set
forth in Appendix B to this opinion.
GEORGE & CO. v. IMAGINATION ENTERTAINMENT 5
design, the three dice almost touch each other, with the L dice
tilted to the left, the C dice tilted to the right, and the R dice
tilted to the left. A ™ symbol is located in the lower right-
hand corner of the design.
Second, the packaging uses the following tagline, "Left,
Center or Right – Don’t Lose Your Chips" (the Tagline).
Third, the packaging contains a design (the Arrows Design)
in which the faces of the three dice that appear in the Rolling
Dice Design are arranged in a U-shaped design, with the L
dice on the upper left side of the U-shaped design, the C dice
on the bottom of the U-shaped design, and the R dice on the
upper right side of the U-shaped design. The word "Left" is
located to the left of the face of the L dice, the word "Center"
is located below the face of the C dice, and the word "Right"
is located to the right of the R dice. The Arrows Design also
has three chips, one below the face of the L dice, one above
the face of the C dice, and one below and slightly to the right
of the face of the R dice. Three arrows also appear, one run-
ning around the left side of the chip below the face of the L
dice, one pointing from the face of the C dice to the chip
appearing above it, and one running around the right side of
the chip below the face of the R dice.
Fourth, a much smaller version of the Rolling Dice Design
appears in other places on the packaging, and each time a ™
symbol follows the design. The design is used to inform the
customer that LCR is "the new game that everyone’s getting
hooked on. So simple, kids love it." It is also used to inform
the customer that the game is so "contagious and fast-paced"
that parents "grab up" LCR "for themselves." Customers are
told through use of the design that you play LCR "with chips
or whatever makes it fun for you." Finally, the design is used
to inform the customer that LCR "is a game for 3 or more
players ages 5 to 105!"
After the initiation of this trademark infringement action,
George added a new package design, which is predominately
6 GEORGE & CO. v. IMAGINATION ENTERTAINMENT
blue in color, to its arsenal of LCR products.6 In addition to
an ® designation following the Rolling Dice Design, the new
product contains ™ designations next to the Tagline and the
Arrows Design.
George markets and sells its LCR games online and in
retail shops, including its own retail shop in Williamsville,
New York. In the four years leading up to the filing of this
infringement action, George sold an average of more than
500,000 LCR games per year.
C
In 2006, Imagination began marketing its version of the
Dice Game to potential distributors under the name "LeFT
CeNTeR RIGHT."7 In June 2007, Imagination began distrib-
uting and selling LEFT CENTER RIGHT to the consuming
public. The rules and game play for LEFT CENTER RIGHT
are the same in all material respects to the rules and game
play of LCR. On January 30, 2006, Imagination filed an
application with the USPTO for the purpose of registering
LEFT CENTER RIGHT as a trademark on the Principal Reg-
ister. On July 17, 2006, the application was denied on the
ground that the mark LEFT CENTER RIGHT was descrip-
tive. On January 17, Imagination filed an amended applica-
tion, which on March 5, 2007 was denied, once again on
descriptiveness grounds. On September 7, 2007, Imagination
amended its application once more, this time seeking registra-
tion on the Supplemental Register.8 On October 1, 2007, the
6
An illustration of the predominately blue packaging used by George is
set forth in Appendix C to this opinion.
7
Although Imagination’s version of the Dice Game is titled "LeFT CeN-
TeR RIGHT," for reading convenience we will refer to the title as LEFT
CENTER RIGHT.
8
A descriptive term lacking secondary meaning may not appear on the
Principal Register, but may appear on the Supplemental Register. E.T.
Browne Drug Co. v. Cococare Prods., Inc., 538 F.3d 185, 202 (3d Cir.
GEORGE & CO. v. IMAGINATION ENTERTAINMENT 7
USPTO accepted Imagination’s amendment and placed LEFT
CENTER RIGHT on the Supplemental Register.
Imagination sells LEFT CENTER RIGHT in two versions,
a "card pack" version and a plastic-wrapped "tin" version.9
Both the card pack and tin version are bright red with bent
yellow arrows depicting game movement with the game
name, LEFT CENTER RIGHT, displayed in the center of
each package. The tagline "The Addictive Dice Game" is fea-
tured prominently on the "card pack" version on the bottom
right inside a dice and prominently on the "tin" version on the
bottom center.
Imagination places its name and logo in an upper corner of
each version. Imagination’s packaging displays a ™ designa-
tion next to LEFT CENTER RIGHT and contains the notice
"IMAGINATION ™ NAME AND LOGO AND LEFT CEN-
TER RIGHT ™ ARE TRADEMARKS OF IMAGINATION
ENTERTAINMENT LIMITED AND IMAGINATION
HOLDINGS PTY LTD."
D
On May 21, 2007, George filed this trademark infringement
action seeking declaratory, injunctive, and monetary relief
under the Lanham Act, 15 U.S.C. § 1051 et seq., and Virginia
law. The gist of George’s complaint is that Imagination’s use
2008). Unlike registrations on the Principal Register, registrations on the
Supplemental Register do not receive some of the advantages extended to
marks registered on the Principal Register. 15 U.S.C. § 1094. In particular,
unlike principal registration, supplemental registration is not prima facie
evidence of the validity of the registered mark, of ownership of the mark,
or of the registrant’s exclusive right to use the registered mark in com-
merce. Id. § 1057(b).
9
An illustration of Imagination’s card pack version of LEFT CENTER
RIGHT is set forth in Appendix D to this opinion; an illustration of the
tin version is set forth in Appendix E.
8 GEORGE & CO. v. IMAGINATION ENTERTAINMENT
of LEFT CENTER RIGHT infringes on: (1) George’s federal
trademark rights in LEFT CENTER RIGHT; and (2) George’s
LCR trademark, which is federally-registered. In resolving
these claims, the district court granted Imagination’s motion
for summary judgment, reasoning that George had no federal
trademark rights in LEFT CENTER RIGHT and that there
was no likelihood of confusion created by Imagination’s use
of LEFT CENTER RIGHT. George noted a timely appeal.
II
We review an award of summary judgment de novo. Hawk-
spere Shipping Co., Ltd. v. Intamex, S.A., 330 F.3d 225, 232
(4th Cir. 2003). Summary judgment is only appropriate "if the
pleadings, the discovery and disclosure materials on file, and
any affidavits show that there is no genuine issue as to any
material fact and that the movant is entitled to judgment as a
matter of law." Fed. R. Civ. P. 56(c). We construe the evi-
dence in the light most favorable to George, the party oppos-
ing Imagination’s summary judgment motion, and draw all
reasonable inferences in its favor. Hill v. Lockheed Martin
Logistics Mgmt., Inc., 354 F.3d 277, 283 (4th Cir. 2004) (en
banc).
A
George first alleges that Imagination’s use of LEFT CEN-
TER RIGHT infringed upon its federal trademark rights in
LCR.
A trademark includes any word, name, symbol, or device
used by an individual to identify and distinguish his goods
"from those manufactured or sold by others and . . . [to] indi-
cate the source of the goods." 15 U.S.C. § 1127. A trademark
puts the purchasing public on notice that all goods bearing the
trademark: (1) originated from the same source; and (2) are of
equal quality. Retail Servs., Inc. v. Freebies Publ’g, 364 F.3d
535, 538 (4th Cir. 2004). Thus, a trademark not only "protects
GEORGE & CO. v. IMAGINATION ENTERTAINMENT 9
the goodwill represented by particular marks," but also allows
"consumers readily to recognize products and their source,"
preventing "consumer confusion between products and
between sources of products." OBX-Stock, Inc. v. Bicast, Inc.,
558 F.3d 334, 339 (4th Cir. 2009).
To establish trademark infringement, a plaintiff must prove
that it owns a valid and protectable mark, and that the defen-
dant’s use of a "reproduction, counterfeit, copy, or colorable
imitation" of that mark creates a likelihood of confusion. 15
U.S.C. § 1114(1)(a); CareFirst of Md., Inc. v. First Care,
P.C., 434 F.3d 263, 267 (4th Cir. 2006); Petro Stopping Ctrs.,
L.P. v. James River Petroleum, Inc., 130 F.3d 88, 91 (4th Cir.
1997). The parties do not dispute that George possesses a
valid and protectable mark in LCR.10 The only question is
whether Imagination’s use of LEFT CENTER RIGHT creates
a likelihood of confusion with George’s use of LCR.
A likelihood of confusion exists if "the defendant’s actual
practice is likely to produce confusion in the minds of con-
sumers about the origin of the goods or services in question."
CareFirst, 434 F.3d at 267 (citation and internal quotation
marks omitted). In assessing whether such confusion exists,
"we look to how the two parties actually use their marks in
the marketplace to determine whether the defendant’s use is
likely to cause confusion." Id.
Our likelihood of confusion case law instructs us to exam-
ine nine factors: (1) the strength or distinctiveness of the
plaintiff’s mark as actually used in the marketplace; (2) the
similarity of the two marks to consumers; (3) the similarity of
10
Because the parties do not dispute the validity and protectability of
LCR, the issues of validity and protectability are irrelevant in this appeal.
Petro Stopping, 130 F.3d at 91 n.2. Whether the district court properly
characterized LCR as suggestive with respect to the first likelihood of con-
fusion factor—strength of the mark—is a different issue that will be con-
sidered infra. Id.
10 GEORGE & CO. v. IMAGINATION ENTERTAINMENT
the goods or services that the marks identify; (4) the similarity
of the facilities used by the markholders; (5) the similarity of
advertising used by the markholders; (6) the defendant’s
intent; (7) actual confusion; (8) the quality of the defendant’s
product; and (9) the sophistication of the consuming public.
See Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th
Cir. 1984) (setting forth factors one through seven); see also
Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 463-64
(4th Cir. 1996) (identifying factors eight and nine). Not all of
these factors are of equal importance, "nor are they always
relevant in any given case." Anheuser-Busch, Inc. v. L & L
Wings, Inc., 962 F.2d 316, 320 (4th Cir. 1992); see also id.
(noting that the Pizzeria Uno factors are not meant to be a
rigid formula for infringement; they are "only a
guide—catalog of various considerations that may be relevant
in determining the ultimate statutory question of likelihood of
confusion"). However, evidence of actual confusion is "often
paramount" in the likelihood of confusion analysis. Lyons
P’ship, L.P. v. Morris Costumes, Inc., 243 F.3d 789, 804 (4th
Cir. 2001); see also Lone Star Steakhouse & Saloon, Inc. v.
Alpha of Va., Inc., 43 F.3d 922, 937 (4th Cir. 1995) (noting
that the actual confusion factor is "entitled to substantial
weight as it provides the most compelling evidence of likeli-
hood of confusion").
The first likelihood of confusion factor focuses on the
strength of the mark. Generally, the stronger the mark, the
greater the likelihood that consumers will be confused by
competing uses of the mark. Strength consists of both concep-
tual strength and commercial strength. CareFirst, 434 F.3d at
269.
A mark’s conceptual strength is determined in part by its
placement into one of four categories of distinctiveness: (1)
generic; (2) descriptive; (3) suggestive; or (4) arbitrary or fan-
ciful. Pizzeria Uno, 747 F.2d at 1527. A generic mark
describes a product in its entirety, Sara Lee, 81 F.3d at 464
n.10, and, therefore, "neither signifies the source of goods nor
GEORGE & CO. v. IMAGINATION ENTERTAINMENT 11
distinguishes the particular product from other products on the
market." Retail Servs., 364 F.3d at 538. Unlike distinctive
marks, a generic mark is never entitled to trademark protec-
tion. See id. (referring to a generic mark as the "antithesis of
a distinctive mark"). Examples of generic marks are bleach,
copiers, cigarettes, and cars.
Fanciful marks, which are inherently distinctive, typically
involve made-up words created for the sole purpose of serv-
ing as a trademark. See Sara Lee, 81 F.3d at 464 (noting that
Clorox®, Kodak®, Polaroid®, and Exxon® are fanciful
marks). Arbitrary marks, which are also inherently distinctive,
typically involve common words that have no connection with
the actual product, as "they do not suggest or describe any
quality, ingredient, or characteristic," so the mark can be
viewed as "arbitrarily assigned." Id.; see also id. (noting that
"Camel® cigarettes" and "Apple® computers" are arbitrary
marks).
Suggestive marks, which are also inherently distinctive, do
not describe a product’s features but merely suggests them.
Retail Servs., 364 F.3d at 538. In other words, the exercise of
some imagination is required to associate a suggestive mark
with the product. Id. Examples of suggestive marks are "Cop-
pertone®, Orange Crush®, and Playboy®." Sara Lee, 81 F.3d
at 464.
Descriptive marks define a particular characteristic of the
product in a way that does not require any exercise of the
imagination. Retail Servs., 364 F.3d at 538. Examples of
descriptive marks include "After Tan post-tanning lotion" and
"5 Minute glue." Sara Lee, 81 F.3d at 464. Descriptive marks
are not inherently distinctive; rather, they require a showing
of secondary meaning before they receive trademark protec-
tion. Retail Servs., 364 F.3d at 538; see also 15 U.S.C.
§ 1052(e)(1) (noting that registration may be refused if the
proposed mark, "when used on or in connection with the
goods of the applicant is merely descriptive or deceptively
12 GEORGE & CO. v. IMAGINATION ENTERTAINMENT
misdescriptive of them"). "Saying that a trademark has
acquired secondary meaning is shorthand for saying that a
descriptive mark has become sufficiently distinctive to estab-
lish a mental association in buyers’ minds between the alleged
mark and a single source of the product." Retail Servs., 364
F.3d at 539 (citation and internal quotation marks omitted);
see also Sara Lee, 81 F.3d at 464 (noting that "secondary
meaning" exists when, "in the minds of the public, the pri-
mary significance of a product feature or term is to identify
the source of the product rather than the product itself" (inter-
nal quotation marks omitted)); Perini Corp. v. Perini Constr.,
Inc., 915 F.2d 121, 125 (4th Cir. 1990) ("Secondary meaning
is the consuming public’s understanding that the mark, when
used in context, refers, not to what the descriptive word ordi-
narily describes, but to the particular business that the mark
is meant to identify.").
Distinguishing between a suggestive mark and descriptive
mark can be difficult. However, "‘if the mark imparts infor-
mation directly, it is descriptive,’" but "‘[i]f it stands for an
idea which requires some operation of the imagination to con-
nect it with the goods, it is suggestive.’" Pizzeria Uno, 747
F.2d at 1528 (quoting Union Carbide Corp. v. Ever-Ready,
Inc., 531 F.2d 366, 379 (7th Cir. 1976)). "An abbreviation of
a descriptive term which still conveys to the buyer the
descriptive connotation of the original term will still be held
to be descriptive." 2 Thomas McCarthy, McCarthy On Trade-
marks and Unfair Competition (hereinafter McCarthy)
§ 11:32 (collecting cases); see also id. § 7:11 ("If a series of
letters is merely a recognizable abbreviation for a descriptive
or generic term, the abbreviation is also classified as descrip-
tive or generic.").11
11
Of course, an abbreviation or nickname of a descriptive term may be
protectable upon the showing of secondary meaning. Cf. G. Heileman
Brewing Co. v. Anheuser-Busch, Inc., 873 F.2d 985, 994-99 (7th Cir.
1989) (holding that "L.A." was a descriptive abbreviation for the descrip-
tive words "low alcohol" for beer and no secondary meaning was
GEORGE & CO. v. IMAGINATION ENTERTAINMENT 13
The district court concluded that the LCR mark was sug-
gestive, understandably because Imagination conceded the
mark was suggestive. Under these circumstances, like the dis-
trict court, we are constrained to conclude that the LCR mark
is suggestive. We are obligated to defer to the determination
of the USPTO, which constitutes prima facie evidence of
whether a mark is descriptive or suggestive. Lone Star Steak-
house, 43 F.3d at 934. If the USPTO believes a mark is
descriptive, the registrant must provide evidence of secondary
meaning before the USPTO will grant registration. Id. Here,
the parties agree that the LCR mark was registered by the
USPTO without any proof of secondary meaning, and that the
USPTO determined that the LCR mark was suggestive. And
although Imagination had an opportunity in the district court
to rebut the presumption raised by the USPTO’s determina-
tion, it declined to do so, instead conceding that the LCR
mark is suggestive. Accordingly, even though LCR is an
abbreviation for LEFT CENTER RIGHT and we harbor doubt
that the LCR mark is suggestive,12 we are not at liberty to take
issue with the district court’s determination.
Our strength of the mark analysis does not end here. The
placement of a mark in either the descriptive or suggestive
category simply is the first step. The second step considers the
mark’s commercial strength, a concept similar to the "second-
acquired); see also Metropolitan Opera Ass’n v. Metropolitan Opera
Ass’n of Chicago, 81 F. Supp. 127, 129 (D.Ill. 1948) (noting that "MET,"
short for the descriptive term "METROPOLITAN OPERA" has acquired
secondary meaning); McCarthy § 12:37 ("In some instances, computer
and Internet abbreviations may be classified as descriptive terms, which
could become trademarks on the acquisition of secondary meaning.").
12
After all, LCR is an abbreviation of the descriptive term LEFT CEN-
TER RIGHT. LEFT CENTER RIGHT is a descriptive term because it
describes a generic dice game that has been in the public domain for quite
some time where players move chips to the left, the center, or the right
based on the outcome of the roll. Moreover, the USPTO has repeatedly
found LEFT CENTER RIGHT descriptive.
14 GEORGE & CO. v. IMAGINATION ENTERTAINMENT
ary meaning" inquiry considered in evaluating a mark’s valid-
ity. CareFirst, 434 F.3d at 269 n.3. Proof of secondary
meaning entails a rigorous evidentiary standard. Perini, 915
F.3d at 125. In Perini, we set forth six factors for a court to
consider in assessing the acquisition of secondary meaning.
Id. They are: (1) the plaintiff’s advertising expenditures; (2)
consumer studies linking the mark to a source; (3) the plain-
tiff’s record of sales success; (4) unsolicited media coverage
of the plaintiff’s business; (5) attempts to plagiarize the mark;
and (6) the length and exclusivity of the plaintiff’s use of the
mark. Id.
With regard to the first Perini factor, George’s advertising
expenditures were minimal. With regard to the second factor,
no consumer studies were performed linking the LCR mark to
George. The absence of such evidence is telling, as such evi-
dence is "generally thought to be the most direct and persua-
sive way of establishing secondary meaning." U.S. Search,
LLC v. U.S. Search.com Inc., 300 F.3d 517, 526 n.13 (4th Cir.
2002). With regard to the remaining factors, the record dis-
closes that George: (1) enjoyed some unsolicited media atten-
tion; (2) was not aware of any attempts to plagiarize prior to
Imagination’s activities; (3) used the LCR mark for over
twenty years; and (4) enjoyed recent sales success.
In assessing these factors under the summary judgment
standard, it is evident that LCR has not acquired secondary
meaning in the context of our commercial strength analysis.
Put simply, the record does not disclose that a substantial
number of present or prospective customers, when hearing or
reading of LCR, would associate LCR specifically with
George. Cf. id. at 526 (concluding that, notwithstanding evi-
dence of advertising expenditures and sales success, summary
judgment was appropriate).
In our view, the LCR mark’s lack of commercial strength
renders the mark weak for purposes of our strength of the
mark analysis. Cf. Petro Stopping, 130 F.3d at 93 ("Even a
GEORGE & CO. v. IMAGINATION ENTERTAINMENT 15
mark held to be suggestive may be found weak under the first
likelihood of confusion factor."). As we noted in Petro Stop-
ping, the "strength of a mark ultimately depends on the degree
to which the designation is associated by prospective purchas-
ers with a particular source." 130 F.3d at 93. Here, the record
is devoid of meaningful evidence demonstrating that consum-
ers associate the LCR mark with George.
In assessing the similarity of the marks under the second
Pizzeria Uno factor, we focus on the dominant portions of the
parties’ marks. Lone Star Steakhouse, 43 F.3d at 936; Pizzeria
Uno, 747 F.2d at 1534-35. In other words, we focus on
whether there exists a similarity in sight, sound, and meaning
which would result in confusion. See Pizzeria Uno, 747 F.2d
at 1534-35 (noting that "Uno," as used by the parties, was
similar in "appearance," "sound," and "meaning"); see also
Sara Lee, 81 F.3d at 465 (noting that the two marks at issue,
though not identical, were "perceived similarly by the eye and
ear"); McCarthy § 23:21 (noting that the degree of similarity
between marks is tested on three levels as encountered in the
marketplace: sight, sound, and meaning).
The district court found that LCR and LEFT CENTER
RIGHT were dissimilar. The district court reasoned that the
marks neither looked alike, nor sounded alike. The district
court noted that LCR consisted of three capital letters, and
LEFT CENTER RIGHT consisted of three words. The district
court also noted that, because the parties conceded LCR was
suggestive, it did not necessarily follow that consumers in the
marketplace would understand LCR and LEFT CENTER
RIGHT to be similar in meaning.
The district court’s conclusion that the second Pizzeria Uno
factor weighed against George was correct. The two marks
look and sound different. George tries to counter this evidence
by arguing that, as an abbreviation of LEFT CENTER
RIGHT, LCR means the same thing as LEFT CENTER
RIGHT. Assuming arguendo that this is the case, the manner
16 GEORGE & CO. v. IMAGINATION ENTERTAINMENT
in which the marks are used on their respective packaging dis-
tinguishes the two marks beyond doubt. Imagination’s pack-
aging and branding is totally different from that of George.
George uses a plain white background with the game promi-
nently displayed (encased in clear plastic) near the Rolling
Dice Design, the Tagline, and the Arrows Design. George
uses mostly the same elements in its newer, blue packaging.
In contrast, Imagination’s game does not use LCR alone or in
a similar design to the Rolling Dice Design, the Tagline, or
the Arrows design. The names of both George and Imagina-
tion appear on their respective packaging as the source of
their respective goods. In short, a consumer in a toy store or
online examining the marks side-by-side unquestionably
would conclude that the two marks are quite different. Cf.
Luigino’s, Inc. v. Stouffer Corp., 170 F.3d 827, 830-31 (8th
Cir. 1999) (holding that "Lean Cusine" was dissimilar to
"Lean ‘N Tasty," reasoning that "[w]ith the exception of the
word ‘lean,’ which is generally descriptive of food and not
registerable as a trademark, the two marks look and sound dif-
ferent"); Petro Stopping, 130 F.3d at 94 (holding that PETRO
STOPPING CENTER and JAMES RIVER PETRO CARD
were dissimilar in sight and appearance); Henri’s Food Prods.
Co., Inc. v. Kraft, Inc., 717 F.2d 352, 355 (7th Cir. 1983)
(holding that "Yogowhip" and "Miracle Whip" are dissimilar
because they look and sound different and because of the dif-
ferences in the product labels).
With regard to the third factor, the similarity of the goods
or services identified by the marks, we note that the goods in
question need not be identical or in direct competition with
each other. CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660,
679 (7th Cir. 2001). The district court concluded that the par-
ties’ goods were nearly identical and, therefore, the similarity
factor weighed in favor of George. We find no error in the
district court’s examination of the third factor.
The fourth and fifth factors examine the similarity of the
facilities used by the parties and the similarity of their adver-
GEORGE & CO. v. IMAGINATION ENTERTAINMENT 17
tising. The district court found that these two factors favored
George because the parties competed in a similar manner in
overlapping markets. We find no error in the district court’s
treatment of these factors.
The sixth factor to be considered is Imagination’s intent in
adopting its LEFT CENTER RIGHT mark. In Pizzeria Uno,
we noted that this factor sometimes is a "major" factor
because "[i]f there is intent to confuse the buying public, this
is strong evidence establishing likelihood of confusion, since
one intending to profit from another’s reputation generally
attempts to make his signs, advertisements, etc., to resemble
the other’s so as deliberately to induce confusion." 747 F.2d
at 1535.
George argues that Imagination intentionally adopted a
similar mark to trade on George’s goodwill in LCR. George
further posits that Imagination exhibited bad faith by failing
to conduct a trademark search or to obtain advice of counsel
before adopting the LEFT CENTER RIGHT mark for use on
its version of the Dice Game. Despite these contentions,
George has presented no meaningful evidence that Imagina-
tion wished to capitalize on George’s LCR trademark. Imagi-
nation understandably chose LEFT CENTER RIGHT because
it succinctly describes how the generic Dice Game is played.
Moreover, George’s packaging does not lead one to conclude
that it sought trademark rights in LEFT CENTER RIGHT. A
™ symbol only follows the Rolling Dice Design, and lan-
guage on the packaging notifies a potential competitor that
trademark rights are sought only in LCR ("LCR ™ is a Trade-
mark of George & Co."). George’s packaging designates
exactly what it considers to be a trademark—LCR and the
Rolling Dice Design. Thus, Imagination’s use of LEFT CEN-
TER RIGHT evidences at most an intent to compete with
LCR and not an intent to infringe on George’s LCR trade-
mark. Finally, the failure to conduct a trademark search or
contact counsel shows carelessness at most, but is in any
event irrelevant because knowledge of another’s goods is not
18 GEORGE & CO. v. IMAGINATION ENTERTAINMENT
the same as an intent "to mislead and to cause consumer con-
fusion." Luigino’s, 170 F.3d at 831 (citation and internal quo-
tation marks omitted). Accordingly, the district court
committed no error in concluding that the intent factor mili-
tated against a finding of a likelihood of confusion.
The seventh and most important factor is actual confusion.
Actual confusion can be demonstrated by both anecdotal and
survey evidence. Tools USA and Equip. Co. v. Champ Frame
Straightening Equip., Inc., 87 F.3d 654, 661 (4th Cir. 1996).
Evidence of only a small number of instances of actual confu-
sion may be dismissed as de minimis. Petro Stopping, 130
F.3d at 95; see also McCarthy § 23:14. In assessing the
weight of the evidence, we note that
[e]vidence of the number of instances of actual con-
fusion must be placed against the background of the
number of opportunities for confusion before one
can make an informed decision as to the weight to be
given the evidence. If there is a very large volume of
contacts or transactions which could give rise to con-
fusion and there is only a handful of instances of
actual confusion, the evidence of actual confusion
may receive relatively little weight.
McCarthy § 23:14; see also Petro Stopping, 130 F.3d at 95
("In light of [the plaintiff’s] huge volume of commerce, [the
plaintiff’s] meager evidence of actual confusion is at best de
minimis.").
Before the hearing on Imagination’s motion for summary
judgment, George’s evidence of actual confusion came from
two individuals, Corinne Harrison and Melissa Fortunato.
Harrison is a toy store owner in Des Moines, Iowa. In January
2007, an Imagination distributor visited Harrison’s store and
showed her Imagination’s 2007 catalog. When Harrison saw
Imagination’s LEFT CENTER RIGHT game depicted, she
GEORGE & CO. v. IMAGINATION ENTERTAINMENT 19
thought the game had been licensed by George because it bore
the LEFT CENTER RIGHT name.
In February 2007, Harrison visited Imagination’s booth at
a New York toy fair. There, she saw LEFT CENTER RIGHT
game materials and still believed the game was licensed by
George because it bore the name LEFT CENTER RIGHT.
Harrison ordered a number of units of Imagination’s LEFT
CENTER RIGHT game because she still mistakenly thought
Imagination’s game was licensed by George. According to
Harrison, had she known Imagination’s game was unlicensed,
she would not have placed the order, implying that it was
"wrong" for Imagination to take business away from a "small
company" like George.
Fortunato, a toy company manager, contacted George in
October 2006 seeking to obtain a license to make a deluxe
version of George’s LCR game. George declined because it
was interested in making its own deluxe version. Upon seeing
Imagination’s 2007 catalog, Fortunato believed that Imagina-
tion had obtained a license from George to make a deluxe ver-
sion of George’s LCR game.
After the district court took Imagination’s motion for sum-
mary judgment under advisement, George twice sought leave
to file additional evidence of actual confusion. In both
instances, the district court granted the motion, which allowed
George to present evidence of actual confusion from two
additional individuals, Sharon Lynch and Jill Smilanich.13
In November 2007, Lynch, a sales associate at George’s
retail store in Williamsville, New York, was approached in
the store by a customer looking for a game called "LEFT
CENTER RIGHT." The customer had previously played
13
In March 2008, George filed yet another motion for leave to file addi-
tional evidence, which was granted in the district court’s July 2008 memo-
randum opinion disposing of the case.
20 GEORGE & CO. v. IMAGINATION ENTERTAINMENT
LCR, as her friend purchased LCR at George’s store. The cus-
tomer informed Lynch that the Toys R Us (where Imagina-
tion’s game was sold) was selling a more expensive version
of George’s game.
In December 2007, Smilanich, George’s office manager,
received a call from a consumer who had purchased Imagina-
tion’s game but mistakenly believed it was George’s game.
According to Smilanich, the caller complained about the
game she purchased and, upon learning she had purchased
Imagination’s game, she became upset and said she would not
have purchased the game had she known it was not George’s
game.
The district court found that the testimony of these wit-
nesses amounted to, at most, de minimis evidence of actual
confusion. Accordingly, the district court looked at the sev-
enth factor as weighing heavily against a finding of a likeli-
hood of confusion.
The district court’s consideration of the actual confusion
factor was not in error. The evidence in the record demon-
strates that George sells 500,000 LCR games per year. Like
Petro Stopping, in light of George’s huge sales volume, four
instances of consumer confusion is at best de minimis. 130
F.3d at 95; cf. Syndicate Sales, Inc. v. Hampshire Paper
Corp., 192 F.3d 633, 639 (7th Cir. 1999) (evidence of only
two consumers who were confused was "minimal" and did
not prevent dismissal on summary judgment); King of the
Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084,
1092-93 (10th Cir. 1999) (holding that seven examples of
actual confusion was de minimis). "At worst, the company’s
failure to uncover more than a few instances of actual confu-
sion creates a presumption against likelihood of confusion in
the future." Petro Stopping, 130 F.3d at 95 (citation and inter-
GEORGE & CO. v. IMAGINATION ENTERTAINMENT 21
nal quotation marks omitted). Accordingly, the seventh factor
weighs heavily against a likelihood of confusion.14
Factor eight, the quality of the defendant’s product, as
noted by the district court, has no relevance in this case. It
applies in "situations involving the production of cheap copies
or knockoffs of a competitor’s trademark-protected goods."
Sara Lee, 81 F.3d at 467. Here, Imagination’s goods are
priced at or above the prices of George’s goods. Accordingly,
the district court correctly determined the eighth factor has no
relevance in this case.
The ninth factor, the sophistication of the consuming pub-
lic, similarly is not relevant. In Sara Lee, we noted that this
factor will only be relevant "when the relevant market is not
the public at-large." Id. Here, the relevant market is the public
at-large, and there is no evidence that persons who buy dice
games are any more sophisticated about dice games than
those who comprise the market for other ordinary retail
goods.
Examining the Pizzeria Uno factors, we note that some
favor George and some favor Imagination. However, the most
significant factor, actual confusion, weighs decidedly against
George. This factor, along with the weakness of the LCR
14
George argues that, because it filed its complaint just before Imagina-
tion released LCR, there was no opportunity for actual confusion to occur.
Thus, according to George, its evidence of four instances of actual confu-
sion creates a genuine issue of material fact. George’s no-opportunity
argument is flawed. Throughout the pendency of the litigation, George
repeatedly sought to submit evidence of actual confusion through motions
to file additional evidence, which the district court granted without hesita-
tion. At the time the district court granted summary judgment in July
2008, only four instances of consumer confusion were before the district
court, and George presented no evidence that its sales and marketing
efforts were slowed by Imagination’s entry into the marketplace. Unques-
tionably, the four instances of consumer confusion, when compared to
George’s huge sales volume are de minimis, at best, for purposes of our
actual confusion analysis.
22 GEORGE & CO. v. IMAGINATION ENTERTAINMENT
mark, the lack of similarity between the two marks, and the
lack of predatory intent, leads to the inescapable conclusion
that there is no likelihood of confusion as a matter of law
between Imagination’s use of LEFT CENTER RIGHT and
George’s use of LCR. In fact, we are aware of no case where
a court has allowed a trademark infringement action to pro-
ceed beyond summary judgment where two weak marks were
dissimilar, there was no showing of a predatory intent, and the
evidence of actual confusion was de minimis. Accordingly,
the district court did not err in granting summary judgment to
Imagination on George’s claim that Imagination’s use of
LEFT CENTER RIGHT federally infringed on George’s use
of LCR.
B
George also contends that the district court erred when it
held that George did not have a valid and protectable mark in
LEFT CENTER RIGHT. In rejecting George’s contention,
the district court concluded that George abandoned all trade-
mark rights in LEFT CENTER RIGHT because the undis-
puted evidence demonstrated that George had abandoned the
use of LEFT CENTER RIGHT as a mark back in 1992.
In general, the party claiming ownership of a mark must be
the first to use the mark in the sale of goods. McCarthy § 16:1.15
The party claiming ownership must also use the mark as a
trademark, that is, the mark must be used to identify the
source of the goods to potential customers. MicroStrategy,
Inc. v. Motorola, Inc., 245 F.3d 335, 341 (4th Cir. 2001).
Thus, so long as a person is the first to use a particular mark
15
Of course, federal registration helps in this regard, as registration is
prima facie evidence that the registrant is the owner of the mark. 15
U.S.C. § 1057(b); id. § 1115(a). Registration grants a presumption of own-
ership, dating ownership to the filing date of the federal registration appli-
cation, and the party challenging the registrant’s ownership must
overcome this presumption by a preponderance of the evidence. Vuitton
et Fils S.A. v. J. Young Enters., Inc., 644 F.2d 769, 775-76 (9th Cir. 1981).
GEORGE & CO. v. IMAGINATION ENTERTAINMENT 23
to identify his goods in a given market, and so long as that
owner continues to make use of the mark, he is "entitled to
prevent others from using the mark to describe their own
goods" in that market. Defiance Button Mach. Co. v. C & C
Metal Prods. Corp., 759 F.2d 1053, 1059 (2d Cir. 1985).
However, if the owner of a mark ceases to use the mark
without an intent to resume use in the reasonably foreseeable
future, the mark is said to have been "abandoned." Emergency
One, Inc. v. American FireEagle, Ltd., 228 F.3d 531, 535 (4th
Cir. 2000). Once abandoned, a mark returns to the public
domain and may, in principle, be appropriated for use by oth-
ers in the marketplace, Indianapolis Colts, Inc. v. Metro. Bal-
timore Football Club Ltd. P’ship, 34 F.3d 410, 412 (7th Cir.
1994), in accordance with the basic rules of trademark prior-
ity, Manhattan Indus., Inc. v. Sweater Bee by Banff, Ltd., 627
F.2d 628, 630 (2d Cir. 1980); see also McCarthy § 17:1
("Once held abandoned, a mark falls into the public domain
and is free for all to use. While acquiescence may bar suit
against one person, abandonment opens rights to the whole
world. Abandonment paves the way for future possession and
property in any other person.") (footnotes omitted).
A trademark is abandoned when "its use has been discon-
tinued with intent not to resume such use." 15 U.S.C. § 1127.
Our case law requires a showing of: (1) non-use by the legal
owner; and (2) no intent to resume use in the reasonably fore-
seeable future by the legal owner. Emergency One, 228 F.3d
at 535. Three consecutive years of non-use creates a presump-
tion that the legal owner intended not to resume use. Id. at
536; see also 15 U.S.C. § 1127. This presumption may be
rebutted with evidence of either actual use or an intent to
resume use. Emergency One, 228 F.3d at 536. The ultimate
burden of proof remains always on the party claiming a mark
has been abandoned. Id.
In this case, the evidence, in the light most favorable to
George, barely demonstrates that George marketed and sold
24 GEORGE & CO. v. IMAGINATION ENTERTAINMENT
a version of the Dice Game under the name LEFT CENTER
RIGHT from 1983 until 1991. However, the record is uncon-
troverted in this respect—some time in 1992, George decided
to stop selling its LEFT CENTER RIGHT version of the Dice
Game, deciding instead to exclusively sell the LCR version of
the game.
George maintains that it has continuously used LEFT CEN-
TER RIGHT as a mark since 1983 and, therefore, it has not
abandoned its rights in LEFT CENTER RIGHT. According to
George, such use is demonstrated through 1991 by its use of
the LEFT CENTER RIGHT version of the Dice Game and
from 1992 until the present by its use of the Tagline and the
Arrows Design on the LCR version of the Dice Game, which
both contain the words "Left," "Center," and "Right." Along
a similar vein, George contends that continuous use of LEFT
CENTER RIGHT is demonstrated by the fact that LCR is an
abbreviation of LEFT CENTER RIGHT. Finally, George con-
tends that continued use is demonstrated through its own con-
tinuous verbal use of LEFT CENTER RIGHT since 1983. As
this contention goes, since 1983, employees of George, in
conversations with customers and other "word-of-mouth"
marketing and selling, sometimes have referred to George’s
version of the Dice Game as LEFT CENTER RIGHT. Appel-
lant’s Br. at 52.
The Tagline and Arrows Design that appear on George’s
packaging prior to Imagination’s use of LEFT CENTER
RIGHT simply do not use LEFT CENTER RIGHT as a mark.
See Opinion Appendix B. First, there is no ™ designation
next to the Tagline or the Arrows design. While not disposi-
tive, the absence of a ™ designation is telling. Second, both
the Tagline and the Arrows design are descriptive in nature,
describing to the customer how the game is played. As such,
the Tagline and the Arrows Design do not operate as indica-
tors of source. Finally, both the Tagline and the Arrows
Design (albeit to a much lesser degree than the Tagline) func-
tion as slogans or advertisements for LCR. While an adver-
GEORGE & CO. v. IMAGINATION ENTERTAINMENT 25
tisement or a slogan certainly can function as a trademark, it
must function as such to be entitled to trademark protection.
MicroStrategy, 245 F.3d at 343. Here, the Tagline and the
Arrows Design do not serve such a dual function. Rather than
indicate source, they describe, advertise, and promote the
game. Under these circumstances, one must conclude that
George has abandoned the LEFT CENTER RIGHT mark as
a matter of law.16
Turning to George’s argument that continuous use of LEFT
CENTER RIGHT is demonstrated by the fact that LCR is an
abbreviation of LEFT CENTER RIGHT, we note this claim
relies on the ability of George to "tack" its prior use of the
LEFT CENTER RIGHT mark from 1983 until 1991 onto its
current use of the LCR mark. The use of an earlier mark can
be tacked onto the use of a subsequent mark only if the previ-
ously used mark is "the legal equivalent of the mark in ques-
tion or indistinguishable therefrom" such that consumers
"consider both as the same mark." Van Dyne-Crotty, Inc. v.
Wear-Guard Corp., 926 F.2d 1156, 1159 (Fed. Cir. 1991).
Furthermore, tacking is permitted "only in rare instances." Id.
at 1160 (citation and internal quotation marks omitted). Legal
equivalence for tacking purposes does not exist simply
because the two marks a party seeks to tack are "confusingly
similar." Id. at 1159. Rather, the marks sought to be tacked
must create the same continuing commercial impression. Id.
Here, LCR and LEFT CENTER RIGHT are not confus-
ingly similar. As noted earlier, they look and sound different.
Moreover, the case law is firmly against the conclusion that
LCR and LEFT CENTER RIGHT are legal equivalents for
16
For the same reasons the Tagline and the Arrows Design cannot estab-
lish use to prevent abandonment of the LEFT CENTER RIGHT mark, we
reject George’s contention that Imagination’s use of LEFT CENTER
RIGHT infringes on George’s trademark rights in the Tagline and the
Arrows Design, as neither the Tagline nor the Arrows Design were used
as a mark on packaging used by LCR prior to Imagination’s use of LEFT
CENTER RIGHT.
26 GEORGE & CO. v. IMAGINATION ENTERTAINMENT
purposes of tacking. See Data Concepts, Inc. v. Digital Con-
sulting, Inc., 150 F.3d 620, 623-24 (6th Cir. 1998) (holding
that "DCI" and "dci" were too dissimilar to support tacking);
Van Dyne-Crotty, 926 F.2d at 1160 (concluding that priority
in "CLOTHES THAT WORK. FOR THE WORK YOU DO"
could not be tacked onto "CLOTHES THAT WORK"; shorter
phrase was not the legal equivalent of the longer mark).
George fares no better with its verbal use argument. This
argument rests on George’s contention that its own use of
LEFT CENTER RIGHT demonstrates continuous use of the
mark. Unfortunately for George, we are aware of no case law
supporting the proposition that a seller of goods who declines
to use a mark as a trademark on the packaging of his goods
obtains trademark rights in the mark through its own verbal
use. Embracing such a verbal use doctrine would open the
door to all varieties of claims where a party took no steps to
use a mark on packaging to identify it as the source of the
goods to potential customers. Such a result surely runs
counter to our reasoning in MicroStrategy. See 245 F.3d at
341 ("Use of a trademark to identify goods and services and
distinguish them from those of others does not contemplate
that the public will be required or expected to browse through
a group of words, or scan an entire page in order to decide
that a particular word, separated from its context, may or may
not be intended, or may or may not serve to identify the prod-
uct.") (citation and internal quotation marks omitted); id. at
342 ("A trademark need not be particularly large in size or . . .
appear in any particular position on the goods, but it must be
used in such a manner that its nature and function are readily
apparent and recognizable without extended analysis or
research and certainly without legal opinion.") (citation and
internal quotation marks omitted); see also 15 U.S.C. § 1127
(requiring that, in the context of the sale of goods, the mark
must be "placed in any manner on the goods or their contain-
ers or the displays associated therewith or on the tags or labels
affixed thereto").
GEORGE & CO. v. IMAGINATION ENTERTAINMENT 27
George makes one other argument attempting to make an
end-run around the consequences of its abandonment of the
LEFT CENTER RIGHT mark. George argues that it has not
abandoned its rights in LEFT CENTER RIGHT because the
consuming public started to use LCR and LEFT CENTER
RIGHT to exclusively indentify George’s version of the Dice
Game long before Imagination began selling its version of the
Dice Game. In pressing this contention, George relies on the
so-called "Public Use" doctrine.
The Public Use doctrine, which is extremely limited in
scope, states that abbreviations or nicknames used only by the
public can give rise to protectable trademark rights to the
owner of a mark which the public has modified. Nat’l Cable
Television Ass’n, Inc. v. American Cinema Editors, Inc., 937
F.2d 1572, 1577 (Fed. Cir. 1991); see also McCarthy § 7:18
(collecting cases). "Such public use by others inures to the
claimant’s benefit and, where this occurs, public use can rea-
sonably be deemed use by that party in the sense of a use on
its behalf." Nat’l Cable, 937 F.2d at 1577-78 (citation and
internal quotation marks omitted). The Public Use doctrine
was developed because "Americans are prone to abbreviate
recognized trademarks and to use nicknames." McCarthy
§ 7:18. Examples of nicknames held protectable as trade-
marks include Coke for Coca-Cola, Coca-Cola Co. v. Busch,
44 F. Supp. 405, 410 (E.D.Pa. 1942), and Bud for Budweiser
beer, Anheuser-Busch, Inc. v. Power City Brewery, Inc., 28 F.
Supp. 740, 742-43 (W.D.N.Y. 1939).
Although the Public Use doctrine appears at odds with the
bedrock trademark principles that "ownership rights flow only
from prior appropriation and actual use in the market," Allard
Enters., Inc. v. Advanced Programming Res., Inc., 146 F.3d
350, 356 (6th Cir. 1998), superior rights are granted to the
owner of the mark as modified by the public to avoid con-
sumer confusion in the marketplace. See McCarthy § 7:18 ("It
is public use that will set the stage for confusion, which is the
evil to be remedied in trademark cases."). Because of this ten-
28 GEORGE & CO. v. IMAGINATION ENTERTAINMENT
sion, the Public Use doctrine generally is confined to
instances in which the public modifies a well-known brand
into a nickname or abbreviation. Brody, Peter, What’s in a
Nickname? Or, Can Public Use Create Private Rights?, 95
T.M.R. 1123, 1158-62 (2005).17
In this case, George is attempting to use the Public Use
doctrine to create trademark rights in a descriptive term
(LEFT CENTER RIGHT) that is an elongation of an abbrevi-
ation (LCR). Such an application is a dramatic expansion of
the Public Use doctrine, as the doctrine is applied when the
public abbreviates or nicknames a term, not the other way
around. The tethering of the Public Use doctrine to nicknames
and abbreviations makes perfect sense because an abbrevia-
tion or nickname typically adds distinctiveness to the owner’s
mark. Coke and Bud clearly add distinctiveness to their
respective marks. In contrast, an elongation does not add dis-
tinctiveness to a mark. "Peanut Butter & Jelly" certainly does
not make "PB & J" more distinctive. The same can be said of
"Bacon, Lettuce, and Tomato" and "BLT."
Two additional factors counsel against application of the
Public Use doctrine in this case. First, George is using the
Public Use doctrine as a back-door means of obtaining trade-
mark protection to a mark that is not even protectable. As
noted by the district court, the descriptive mark LEFT CEN-
TER RIGHT has not acquired secondary meaning. Second,
17
Outside of the abbreviation and nickname context, the Public Use doc-
trine has been applied in one other limited circumstance—where a sports
franchise relocates to another city and uses the mark prior to the infring-
er’s use. See Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 188
F.3d 427, 434-35 (7th Cir. 1999) (Public Use doctrine applied when Los
Angeles Rams franchise relocated to St. Louis and public had been using
St. Louis Rams name in connection with football franchise for several
weeks prior to the plaintiff’s use). In a sports franchise situation, "a strong
presumption of franchise owner priority" is present. Id. at 434. Here, obvi-
ously, we are not dealing with a franchise relocation situation, so there is
no strong presumption in George’s priority in LEFT CENTER RIGHT.
GEORGE & CO. v. IMAGINATION ENTERTAINMENT 29
the Public Use doctrine does not provide trademark protection
where the owner of the mark fails to continue to use the mark.
Cf. Harley Davidson, Inc. v. Grottanelli, 164 F.3d 806, 812
(2d Cir. 1999) (holding that whatever distinctiveness the nick-
name "hog" might have once had, it had become generic, in
part because of the plaintiff’s "deliberate resistance" to link-
ing its products to the word).
III
For the reasons stated herein, the judgment of the district
court is affirmed.
AFFIRMED
30 GEORGE & CO. v. IMAGINATION ENTERTAINMENT
Appendix A
GEORGE & CO. v. IMAGINATION ENTERTAINMENT 31
Appendix B
32 GEORGE & CO. v. IMAGINATION ENTERTAINMENT
Appendix C
GEORGE & CO. v. IMAGINATION ENTERTAINMENT 33
Appendix D
34 GEORGE & CO. v. IMAGINATION ENTERTAINMENT
Appendix E