Section 2(f) secondary meaning presumption doesn’t apply to unregistered mark
Sand Hill Advisors, LLC v. San Hill Advisors, LLC 2010 U.S. Dist. LEXIS 5935 (N.D. Cal. 2010.)
Plaintiff, Sand Hill Advisors, LLC (registered in DE) offer wealth management services in the Silicon Valley area and have an office on Sand Hill Road, a road known for venture capitalists. Defendant, Sand Hill Advisors, LLC (registered in CA) purchase real estate on behalf of the owners, Sandell and Hill.
Plaintiff filed suit for trademark infringement against Defendant when Plaintiff could not register as a foreign LLC in California. The court granted defendant’s motion for summary judgment on the grounds that Sand Hill Advisors, as used by plaintiff, was geographically descriptive.
Plaintiff argued that Sand Hill was suggestive because the road is famous for venture capitalist firms and entrepreneurs. Also, plaintiff argued they had obtained secondary meaning by using the name for more than five years. Plaintiff had been denied a trademark registration on the basis of secondary meaning.
The court ruled that Sand Hill Advisors was primarily geographically descriptive as the company provided advisory services from Sand Hill Road. The court also ruled plaintiff had offered no proof of secondary meaning. The 2(f) presumption (15 USC 1052(f)) could not be used because it applies only to registered marks. Furthermore, even if the presumption did apply, plaintiff failed to show five years of exclusive and continuous use.
Plaintiff also did not show actual acquisition of secondary meaning- although they attested that they had advertised for a number of years, they offered no evidence that the advertising had been effective (citing Art Attacks Ink, LLC v. MGA Entertainment Inc. 581 F.3d 1138).
Finally, the court compared the two marks under the likelihood of confusion standard and found that the services were not related enough for infringement.