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E.T. Browne Drug Co. v. Cococare Prods. - 538 F.3d 185 (3d Cir. 2008)


The United States Court of Appeals for the Third Circuit has identified an eleven-item, non-exhaustive list of factors relevant to the factual determination whether a term has acquired secondary meaning: (1) the extent of sales and advertising leading to buyer association; (2) length of use; (3) exclusivity of use; (4) the fact of copying; (5) customer surveys; (6) customer testimony; (7) the use of the mark in trade journals; (8) the size of the company; (9) the number of sales; (10) the number of customers; and, (11) actual confusion. The evidentiary bar must be placed somewhat higher when the challenged term is particularly descriptive. 


Plaintiff E.T. Browne Drug Co. ("Browne", and defendant Cococare Prods., each manufactured personal care and beauty products that contain cocoa butter. Browne filed suit against Cococare in federal district court claiming that it had a protected trademark interest under the Lanham Act in the term "Cocoa Butter Formula," which was featured prominently on its products. Cococare, however, disputed the validity of the asserted trademark. The district court entered summary judgment in Cococare's favor after concluding that the term was generic and thus was not entitled to trademark protection. It held that Browne had the burden of proving the existence of a protectable mark because "Cocoa Butter Formula" did not appear on the Patent and Trademark Office's principal register. Brown appealed, claiming that "Cocoa Butter Formula" should receive trademark protection as a descriptive term that had acquired secondary meaning. 


Did the term "Cocoa Butter Formula" acquire secondary meaning?




The appellate court held that a genuine issue of material fact existed as to whether "Cocoa Butter Formula" was generic. But even assuming it was descriptive, the term had to have a secondary meaning to be protectable. Because Brown failed to identify sufficient evidence to create a genuine issue of material fact on that point, the appellate court affirmed the grant of summary judgment in favor of Cococare. The appellate court remanded, however, to allow the district court to enter an appropriate order to cancel the supplemental registration of "Cocoa Butter Formula."

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