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Case 2:04-cv-00045-BO Document 32 Filed 06/12/2006 Page 1 of 15

IN THE UNITED STATES DISTRICT COURT


FOR THE EASTERN DISTRICT OF NORTH CAROLINA
NORTHERN DIVISION

OBX-STOCK, INC., 1
)
Plaintiff, )
)
v. 1 ORDER
)
BICAST, INC., )
)
Defendant. )

This matter is before the Court on Defendant's Motion for Summary Judgment. In the

underlying case, Plaintiff OBX-Stock, Inc. alleges intentional trademark infringement, unfair

competition and false designation of origin in violation of 15 U.S.C. tj 1125(a); trademark

dilution in violation of 15 U.S.C. 1125(c); violations of common law trademark rights; and

violations of North Carolina's unfair and deceptive trade practices statute, N.C. Gen. Stat. tj 75-

1.1. Defendant Bicast, Inc. did not file a counterclaim, but has requested that the Court consider

cancellation of Plaintiffs registered trademarks. A hearing on the instant motion was held in

Elizabeth City on March 27,2006. For the reasons discussed below, Defendant's Motion for

Summary Judgment is GRANTED and the matter is DISMISSED.

BACKGROUND

This case arises out of the efforts of two companies to capitalize on the popularity of

North Carolina's Outer Banks. The Outer Banks are North Carolina's unique access to the

Atlantic Ocean, consisting of hundreds of miles of barrier islands, sand beaches and nature

preserves. The area attracts tourists from around the world for its historical significance,
Case 2:04-cv-00045-BO Document 32 Filed 06/12/2006 Page 2 of 15

recreational opportunities and natural beauty.

Plaintiff OBX-Stock , Inc. ("Stock") is based on the Outer Banks at Kill Devil Hills.

Plaintiffs former president, Jim Douglas, claims that he coined the term " O B X as an

abbreviation for the Outer Banks in 1994. In deposition testimony, Douglas recounted that

around that time he was vacationing in Nantucket, Massachusetts, and saw stickers with the

abbreviation "ACK." The ACK abbreviation for Nantucket comes from the identification code

for a World War 11-era airport located on Nantucket. The format of such stickers- generally a

round white sticker with a short abbreviation in a stark black font- is based on car decals in

Europe, which are used to identify a vehicle's country of origin. Similar stickers are now sold

throughout the United States, with different abbreviations for different regions or cities.

After seeing the Nantucket stickers, Douglas concluded that similar stickers with an

abbreviation for the Outer Banks could be successful. Douglas alleges that after returning from

Nantucket, he began selling "OBX" stickers at his restaurant "Chili Peppers" in Kill Devil Hills.

Shortly thereafter, Douglas and a partner incorporated Plaintiff OBX-Stock, and expanded into

other OBX-branded goods, including t-shirts, bottle openers, and other tourist sundries.

Plaintiff first sought federal trademark registration for OBX in 1998. Initially, the United

States Patent and Trademark Office ("USPTO") rejected Plaintiffs applications on the basis that

OBX was geographically descriptive, and thus not eligible for registration. However, since the

initial rejection, the USPTO has granted Plaintiff five registrations for various uses of " O B X :

Principal Registration No. 2,593,347: For metal license plates and sports clothing,
including t-shirts, shirts, hats and caps.
Principal Registration No. 2,837,794: For stickers.
Supplemental Registration No. 2,610,784: For beer.
Supplemental Registration No. 2,606,141 : For entertainment services.
Case 2:04-cv-00045-BO Document 32 Filed 06/12/2006 Page 3 of 15

Supplemental Registration No. 2,861,721 : For eyeglasses, magnets and computer


mouse pads; non-metal key rings; beverage glassware, bottle openers, bottle
squeegees, and bottled drinking water.'

Plaintiffs business has experienced significant growth, and OBX-branded stickers have

become popular. At the same time, OBX has become a widely-accepted abbreviation for the

Outer Banks.

Defendant Bicast, Inc. ("Bicast") was formed in 1989, and is wholly-owned by William

and Jo Carolyn Gaertner. The company, based in Williamsburg, Virginia, provides souvenirs to

regional retail outlets. Since its founding, Defendant has sold many items with geographic

abbreviations, including Outer Banks stickers with the abbreviation "OB."

According to Defendant, in 2002, Mr. Gaertner's daughter Stacy Harris came up with a

new logo: "OBXtreme." Defendant claims that the logo was a combination of its pre-existing

"OB" sticker and the phrase "Xtreme," which refers to the many outdoor activities available on

the Outer Banks. In June 2003, Defendant began selling products with the "OBXtreme" logo,

including stickers, magnets, postcards, hats and license plates. Defendant claims that its sales

from "OBXtreme" logo goods have been minimal, accounting for a total of $9,663 in revenues

and $5,030 in gross profits. In April of 2005, Defendant stopped selling "OBXtreme" branded

products, pending the outcome of this lawsuit.

'Registration on the Principal Register confers a number of substantive and procedural


rights that are unavailable for marks on the Supplemental Register. See IDVN. America v. S&M
Brands, 26 F. Supp. 2d 815 (E.D. Va. 1998) (citing 3 J. Thomas McCarthy, Trademarks and
Unfair Competition $5 19:9, 19:36 (4th ed. 1996). For example, Principal Registration serves as
prima facie evidence of a registrant's exclusive right to use a mark, while Supplemental
Registration has no such effect. Id. Supplemental Registration does not confer any substantive
trademark rights, however, Supplemental Registration has the dual benefits of creating federal
jurisdiction for disputes arising over a mark's use, and putting others on notice of a party's use of
the mark.
Case 2:04-cv-00045-BO Document 32 Filed 06/12/2006 Page 4 of 15

On November 5,2002, Defendant filed several applications for federal trademark

registration of "OBXtreme." Soon thereafter, Defendant received a cease and desist letter from

Plaintiffs counsel, in which Plaintiffs counsel threatened to sue Defendant, and to oppose

Defendant's applications for trademark registration. Ultimately, Plaintiff did not oppose

Defendant's registration applications with the USPT0,2 and the USPTO granted Defendant 10

separate registrations for use of the phrase " O ~ ~ t r e m e . " ~

Plaintiff initiated this lawsuit in November of 2004, claiming that Defendant's use of

"OBXtreme" infringed on Plaintiffs trademark rights in "OBX." In the Complaint, Plaintiff sets

forth claims of: (1) Intentional trademark infringement and false designation of origin in

violation of 15 U.S.C. § 1125; (2) Trademark dilution in violation of 15 U.S.C. § 1125(c); (3)

common law trademark infringement; (4) wanton and reckless infringement of Plaintiffs

trademark right^;^ and (5) unfair and deceptive trade practices pursuant to N.C. Gen. Stat. 75-

2However, in June of 2005, after Defendant's trademarks were registered, Plaintiff


petitioned the USPTO for suspension of Defendant's trademark registrations pending the
outcome of this lawsuit.

3~efendant'sfederal trademark registrations for "OBXtreme" include the following, all


on the Principal Register: (1) No. 2,989,779: For mugs; (2) No. 2,890,214: For non-metal goods,
including non-metal key fobs, non-metal key tags, key chains, etc.; (3) No. 2,911,661: For metal
goods, including metal key fobs, key tags, key chains, etc.; (4) No. 2,995,723: For cloth and
fabric flags, banners, towels and beach towels; (5) No. 2,911,662: For clothing; (6) No.
2,9 11,663: For paper goods, including calendars, postcards and stickers; (7) No. 2,911,663: For
surfboards and other recreational goods; (8) No. 2,93 1,931: For refrigerator magnets; (9) No.
2,909,297: For umbrellas; (10) No. 2,909,298: For lanyards for glasses and other goods.

4~efendant has treated Count Four of the Complaint as a state law unfair and deceptive
trade practices claim for purposes of summary judgment, given Plaintiffs explicit request in
Count Four that the Court find Defendant's conduct an unfair and deceptive trade practice. In
response, Plaintiff does nothing to clarify the cause of action, but simply denies that the count
lies under North Carolina's unfair and deceptive trade practices statute. Given Plaintiffs
representation that the count is not a state law claim for unfair and deceptive trade practices, it is
Case 2:04-cv-00045-BO Document 32 Filed 06/12/2006 Page 5 of 15

Defendant has moved for summary judgment as to all of Plaintiffs claims. In response,

Plaintiff concedes that it cannot establish actual damages, an element of the state law unfair and

deceptive trade practices claim. Plaintiff thus acquiesces in dismissal of Count 5 of the

Complaint. Plaintiff has responded in opposition to Defendant's Motion for Summary Judgment

on the other causes of action, and the motion is ripe for review.

ANALYSIS

I. Standard of Review

A court may grant summary judgment only if there is no genuine issue as to any material

fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c);

Celotex Corp. v. Catrett, 477 U.S. 3 17 (1986). The court must determine "whether the evidence

presents a sufficient disagreement to require submission to a jury or whether it is so one-sided

that one party must prevail as a matter of law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242,

251-52 (1986). The moving party bears the initial burden to show the court that there is an

absence of a genuine issue concerning any material fact and that the non-moving party cannot

prevail. See Celotex, 477 U.S. at 325. In order to survive the motion, the non-moving party must

then show that there is "evidence from which a jury might return a verdict in his favor."

Anderson, 477 U.S. at 257. The court must accept all of a non-moving party's evidence as true

and will view all inferences drawn from the underlying facts in the light most favorable to the

non-moving party. See id. at 255.

clear that Count Four of the Complaint, which refers to Defendant's "willful infringement" and
requests a permanent injunction, simply supplements Plaintiffs claims of intentional
infringement contained in Count One of the Complaint.
Case 2:04-cv-00045-BO Document 32 Filed 06/12/2006 Page 6 of 15

II. Validitv of Plaintiff's Trademarks

Plaintiff alleges federal statutory trademark infringement, common law trademark

infringement, and dilution. To prevail on its infringement claims, Plaintiff must establish four

elements: "(1) ownership of (2) a valid trademark (3) which was used by Defendant in a

trademark sense without the owner's consent (4) in a manner likely to cause confusion." United

States Hosiery Corp. v. The Gap, Inc., 707 F. Supp. 800,810 (W.D.N.C. 1989).' Thus, at the

outset, Plaintiff must demonstrate ownership of a valid, protectible trademark to prevail on its

infringement claims.

Ownership of a valid, protectible trademark is also a minimum requirement of a Federal

Trademark Dilution Act ("FTDA") claim under 4 1125(c). The FTDA, which became effective

in 1996, created a new "federal cause of action to protect famous marks from unauthorized users

that attempt to trade upon the goodwill and established renown of such marks and, thereby, dilute

their distinctive quality." H.R. Rep. No. 104-374, at 3, reprinted n 1995 U.S.C.C.A.N at 1030.

The statutory language allows redress to be obtained only by "[tlhe owner of a famous mark."

See 15 U.S.C. 4 1125(c)(l). Therefore, a dilution action cannot lie absent ownership of a valid

interest in particular trademark rights.

In order to prevail on its infringement and dilution claims, Plaintiff must first demonstrate

a valid, protectible interest in OBX. See Resorts of Pinehurst v. Pinehurst Nut 'I Corp., 148 F.3d

4 17 (4th Cir. 1998). Defendant argues that OBX, as a geographical designation, is not worthy of

'Put more succinctly, in order to prevail on claims of trademark infringement, "a


complainant must demonstrate that it has a valid, protectible trademark and that the defendant's
use of a colorable imitation of the trademark is likely to cause confusion among consumers."
Lone Star Steakhouse & Saloon, Inc. v. Alpha of Virginia, Inc., 43 F.3d 922, 930 (4th Cir. 1995).
Case 2:04-cv-00045-BO Document 32 Filed 06/12/2006 Page 7 of 15

trademark protection. Defendant also argues that Plaintiffs trademark registrations should be

cancelled, given the widespread understanding that OBX refers to the Outer Banks.

Marks are generally divided into four categories, in "ascending order of strength or

distinctiveness: 1. generic; 2. descriptive; 3. suggestive; and 4. arbitrary or fancifbl." Pizzeria

Uno, 747 F.2d at 1527. Marks that are simply generic, or descriptive (without having acquired a

secondary meaning), are not entitled to trademark protection, while suggestive and arbitrary

marks are. Id. The term "secondary meaning" is "shorthand for saying that a descriptive mark

has become sufficiently distinctive to establish 'a mental association in buyers' minds between

the alleged mark and a single source of the product."' Retail Services, Inc. v. Freebies Pub1 'g,

364 F.3d 535, 539 (4th Cir. 2004) (quoting 2 J. Thomas McCarthy, McCarthy on Trademarks

and Unfair Competition fj 15:5 (4th ed. 2003)) (emphasis in original).

The parties dispute the appropriate category of the " O B X mark. Defendant contends

that OBX is a generic or geographically descriptive reference to the Outer Banks, while Plaintiff

argues that it has submitted sufficient evidence of secondary meaning such that the mark is

entitled to protection. Under the Lanharn Act, a party cannot obtain a trademark interest in a

purely descriptive geographical designation. See 15 U.S.C. 5 1052(e)(2). It is well-established

that when a geographic term is used primarily to denote where a product originates, such a mark

is unprotectible because it does not perform the traditional trademark function of distinguishing a

good or service. See Elgin National Watch Co v. Illinois Watch Case Co., 179 U.S. 665,673

(1901). North Carolina courts have reiterated that geographically descriptive designations are not

accorded trademark rights at common law. See Charcoal Steak House, Inc. v. Staley, 263 N.C.

199,201 (1964). However, a geographic designation may obtain trademark protection if the
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designation has acquired secondary meaning. Resorts of Pinehurst, 148 F.3d at 421. As the

Fourth Circuit Court of Appeals explained in Resorts of Pinehurst, "[slecondary meaning has

been established in a geographically descriptive mark where the mark no longer causes the public

to associate the goods with a particular place, but to associate goods with a particular source."

Id. (quoting Boston Beer Co. Ltd Partnership v. Slesar Bros. Brewing Co., Inc., 9 F.3d 175, 181

(1st Cir. 1993)).

On this issue, the Court is guided by the fact that the USPTO granted Plaintiff trademark

registrations for several uses of the abbreviation "OBX." The fact that the Office granted this

registration isprima facie evidence that the trademark in question is not generic or descriptive

(without secondary meaning), and is therefore entitled to protection. See US. Search, LLC v.

US. Search.com Inc., 300 F.3d 517, 524 (4th Cir. 2002).

Courts do have the power, however, to overrule the Office's determination of a mark's

strength. See 15 U.S.C. $ 11 19. In the trial context, the existence of a registration produces a

burden-shifting effect in which the burden of production is placed on the opposing party to

produce sufficient evidence to show by a preponderance of evidence that a mark is generic. See

Glover v. Ampak, Inc., 74 F.3d 57, 59 (4th Cir. 1996). Further, the fact that the Office has

granted a registration does not per se create an issue of fact sufficient to defeat a motion for

summary judgment if the defendant offers the requisite proof that the mark is only generic or

descriptive. See Retail Services, 364 F.3d at 543-46 (4th Cir. 2004) (upholding cancellation of

trademark after finding at summary judgment that term was generic); Convenient Food Mart,

Inc. v. 6-Twelve Convenient Mart, Inc., 690 F. Supp. 1457 (D. Md. 1988), afd 870 F.2d 654

(4th Cir. 1989) (cancelling trademark registration at summary judgment after finding that term
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was generic).

To rebut the presumption created by a plaintiffs registration, a defendant must offer

sufficient proof that "the primary significance of the mark [is] its indication of the nature of class

of the product or service, rather than an indication of source." Glover v. Ampak, Inc., 74 F.3d 57,

59 (4th Cir. 1996) (emphasis in original). Similarly, in the context of a geographical designation,

evidence that the mark is primarily associated with a location rather than a product serves the

same ends. Such evidence may come from various sources, including "purchaser testimony,

consumer surveys, listings and dictionaries, trade journals, newspapers, and other publications."

Id. "If sufficient evidence of genericness is produced to rebut the presumption, the presumption

is "neutralized' and essentially drops from the case, although the evidence giving rise to the

presumption remains." Id. (emphasis in original).

Defendant has offered overwhelming evidence from appropriate sources that OBX is a

geographically descriptive or generic term for the Outer Banks. Defendant's evidence includes

several examples of third party usage, including:

Internet searches demonstrating that thousands of internet pages use OBX to refer to the
Outer Banks.
Several companies other than Plaintiff selling clothing featuring an OBX logo.
Several companies using OBX in marketing to refer to the Outer Banks, such as the "Best
Pizza in OBX."
News stories using OBX as an abbreviation for the Outer Banks.
Vacation guides using OBX to refer to the Outer Banks.

The above are only a few of the examples of the widespread usage of OBX as a

geographically descriptive abbreviation. In addition, two online dictionaries define OBX as an

acronym for the Outer Banks. Douglas, the original coiner of the phrase, has admitted in

deposition testimony that OBX signifies the Outer Banks. An exhibit submitted by Plaintiff
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entitled "Frequently Asked Questions About O B X states that "OBX stands for the Outer Banks

of North Carolina."

Here, taken in the light most favorable to Plaintiff, OBX-Stock is the successor in interest

to rights in the OBX mark, which was created by Plaintiffs former president. Plaintiffs efforts

to market OBX car stickers and other products have been largely responsible for the term's local

ubiquity. However, this does not mean that Plaintiff is entitled to trademark protection for use of

the phrase in particular contexts. Rather, Plaintiff must demonstrate that the abbreviation has

acquired some form of secondary meaning in the mind of the consuming public. Resorts of

Pinehurst, 148 F.3d at 421. Specifically, given that OBX is a geographical designation, Plaintiff

must come forward with some evidence that consumers associate OBX-branded goods with a

particular type of product or producer of a product. See Barcelona.corn, Inc. v. Excelentisirno

Ayuntarniento de Barcelona, 330 F.3d 617,629 (4th Cir. 2003) ("Barcelona" not worthy of

trademark protection where no evidence in record that consumers associate mark with anything

but the city).

As the Fourth Circuit explained in US. Search, "[slecondary meaning is defined as 'the

consuming public's understanding that the mark, when used in context, refers not to what the

descriptive word ordinarily describes, but to the particular business that the mark is meant to

identify."' US. Search, 300 F.3d at 525. While no one factor is determinative, in resolving

whether secondary meaning has been established a court will consider: "(1) advertising

expenditures, (2) consumer studies linking the mark to a source, (3) sales success, (4) unsolicited

media coverage of the product, (5) attempts to plagiarize the mark, and (6) the length and

exclusivity of the mark's use." Id.


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Plaintiff argues that it has supplied affirmative evidence that the OBX mark has obtained

secondary meaning. Plaintiff alleges that the evidence submitted to the Court- including

financial records and tax returns for Plaintiff, as well as copies of publicity concerning the OBX

mark- constitute evidence of secondary meaning. Nowhere in its response brief does Plaintiff

explain what secondary meaning the 340 exhibits illustrate. Nor does Plaintiff explain where the

documents come from or what their significance is in the context of Defendant's motion.

Instead, Plaintiff has supplemented its response with an affidavit by Plaintiffs counsel Donald

Casey, which states that "[oln information and belief the [attached exhibits] constitute evidence

of secondary meaning." At the summary judgment stage, the non-moving party must "go beyond

the pleadings" and "designate specific facts showing that there is a genuine issue for trial."

Celotex v. Catrett, 477 U.S. 3 17, 324. A lack of specificity is endemic in Plaintiffs response to

the instant motion. Not only has Plaintiff failed to identify for the Court what secondary

meaning the evidence supports, but Plaintiffs response, which essentially asks that the Court

divine the meaning of Plaintiffs hundreds of proffered exhibits, is not indicative of a serious

attempt to litigate the merits of this dispute.

The unexplained exhibits supplied by Plaintiff do conform with some of the factors

supporting secondary meaning listed in US. Search. For example, it is evident that Stock has

been fairly successful in the sales and promotion of OBX-branded products. In its early years the

company experienced significant revenue growth in the sale of OBX products, and in 2004 it had

sales of over $1 million The company has sponsored sporting competitions and scholarship^.^

6Plaintiff has also sponsored sports teams under the moniker "OBX Extreme Team."
However, Plaintiff does not claim trademark rights in the name, nor are the instant claims based
on the similarity of OBXtreme and OBX Extreme Team.
Case 2:04-cv-00045-BO Document 32 Filed 06/12/2006 Page 12 of 15

With Plaintiffs permission, the Dare County DMV began offering rear mounted license plates

with an "OBX" prefix in the spring of 2001. Plaintiffs exhibits also contain news articles about

Plaintiffs efforts to obtain federal trademark registration for OBX. However, in the context of a

geographical abbreviation, the type of evidence offered by Plaintiff does little, if anything, to

demonstrate that consumers associate OBX with either Plaintiff or its products.

As noted above, in the context of a geographical designation, evidence of secondary

meaning must demonstrate that consumers associate goods with a particular source. Resorts of

Pinehurst, 148 F.3d at 421. There is simply no evidence in the record of this case that any

consumer associates OBX with Plaintiffs products or Plaintiff i t ~ e l f . While


~ strong product

sales might ordinarily imply secondary meaning, in this case Plaintiffs sales occurred despite

relatively meager advertising e x p e n d i t ~ e s . This


~ fact, coupled with testimony from one of

Plaintiffs representatives, strongly suggests that the popularity of OBX was self-perpetuating?

Plaintiffs sales are not instructive absent evidence that the sales were the result of trademark

71n contrast to this case, in Resorts of Pinehurst the district court was confronted with
overwhelming evidence of secondary meaning. Resorts of Pinehurst v. Pinehurst Nat 'I Corp.,
1997 U.S. Dist. LEXIS 11597 (M.D.N.C. 1997). The case involved a dispute over whether the
Pinehurst Golf Resort could maintain trademark rights in "Pinehurst," which is also the name of
the town where the resort and its courses are located. The golf resort presented substantial
evidence that consumers associate the name Pinehurst with the resort's courses, including
consumer surveys, books, and articles detailing the courses' worldwide fame. The district court
also noted that the Pinehurst mark had been used by the plaintiff since the early 1900s. Id. at
*29. The district court ultimately found that Pinehurst Golf Resort had demonstrated secondary
meaning, and thus had trademark rights in the name "Pinehurst."

'Stock's records indicate that it averaged between $1 0,000 and $1 5,000 in advertising
expenditures per year between 1994 and 2004.

91n his deposition, Stock co-owner Donald Watson states [in reference to OBX]: "It was a
phenomenon. It was self-promoting, so you didn't have to promote it; you didn't have to
advertise it." D. Watson Depo. pp. 165.
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recognition, which Plaintiff has failed to provide. Moreover, Plaintiffs use of the OBX mark has

hardly been exclusive, as evidenced by the plethora of third party-usage evidence. Plaintiff has

fought the rising tide of third-party usage by sending several "cease and desist" letters to alleged

infringers, but at this point, the term's widespread acceptance as an abbreviation for the Outer

Banks makes full enforcement of the OBX mark plainly impossible.

Most fatal to Plaintiffs claims is the fact that Plaintiff has failed to explain what type of

secondary meaning the submitted evidence might support. Plaintiff has not offered consumer

surveys, expert reports, or testimony from any witness indicating that consumers associate OBX

with Plaintiff or its products. The evidence proffered by both Plaintiff and Defendant strongly

supports the conclusion that OBX means the Outer Banks, and nothing else. In fact, nowhere in

its response does Plaintiff argue that OBX means anything but the Outer Banks. Instead,

Plaintiff acknowledges that OBX has become a geographically descriptive mark, but argues that

its trademark rights survive the geographical usage of the abbreviation, due to the fact that

Plaintiff is partly responsible for the acronym's prevalence. Plaintiffs argument is unavailing.

While Plaintiffs efforts to promote OBX may be laudable, trademark rights are not granted for a

defined period, and a mark's federal registration may be cancelled when it becomes generic. See

15 U.S.C. § 1064.

It is firmly established that abbreviations and acronyms for generic terms are themselves

generic, where recognized by the public as such. See, e.g., National Conference of Bar

Examiners v. Multistate Legal Studies, Inc., 692 F.2d 478 ( 7th Cir. 1982) (MBE generic

abbreviation of "multistate bar examination"). For example, it is widely accepted that "NYC"

refers to New York City; more recently, "the O.C." has entered the public consciousness as an
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abbreviation for Orange County, California. Neither acronym would be worthy of trademark

protection when used to refer to New York or Orange County.

Product marks such as "Aspirin" and "Thermos" often become generic and thus lose

trademark protection. America Online, Inc. v. AT& T Corp., 243 F.3d 8 12, 82 1 (4th Cir. 200 1).

Such principles are equally applicable to geographic acronyms and abbreviations, despite the fact

that novel geographic designations are less common than new products. "The O.C." is

trademarkable as applied to television shows, because of the fact that the term has secondary

meaning in the eyes of the relevant consuming public. Here, Plaintiff concedes that OBX means

only the Outer Banks; Plaintiff does not argue that consumers associate OBX with Plaintiffs line

of stickers, bottle openers or clothing.

The Court is mindful of the Fourth Circuit's admonition that "a district court should not

freely substitute its opinion for that of the PTO." America Online, 243 F.3d at 8 17. However, as

the Fourth Circuit noted in Retail Services, at the summary judgment stage a plaintiff is not

entitled to survive summary judgment simply by virtue of having a registered mark. 364 F.3d at

543-46. As the non-moving party, Plaintiff is obligated to respond with specific evidence from

which a jury might return a verdict in its favor. Even accepting Plaintiffs trademark

registrations as prima facie evidence of OBX's protectibility, Plaintiffs response is inadequate to

create a question of fact as to the nature of the OBX mark.'' It is patently incongruous for

Plaintiff to offer hundreds of exhibits, purportedly as evidence of secondary meaning, while

''As the district court noted in Retail Services, "[a]lthough genericness is a question of
fact, resolution of this question on summary judgment is nevertheless appropriate where the
evidence is so one-sided that there can be no doubt about how the question should be answered."
Retail Services, Inc. v. Freebies Pub1 'g, 247 F. Supp. 2d 822 (E.D.Va. 2003), aff'd, 364 F.3d 535
(4th Cir. 2004).
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simultaneously acknowledging that OBX means only one thing in the minds of the consuming

public- the Outer Banks." Accordingly, Defendant's Motion for Summary Judgment is

GRANTED as to all of Plaintiffs claims.I2

CONCLUSION

For the reasons discussed above, Plaintiff has failed to present sufficient evidence from

which a jury could conclude that OBX has secondary meaning in the eyes of consumers.

Plaintiff has presented overwhelming evidence that OBX is a generic or geographically

descriptive term for the Outer Banks. Thus, Plaintiff has not established ownership in a valid

trademark. Accordingly, Defendant's Motion for Summary Judgment is GRANTED as to all of

Plaintiffs claims. This matter is DISMISSED.

SO ORDERED, this A
-
day O K . 2006.

"Despite Defendant's persuasive argument, the Court declines to order cancellation of


Plaintiffs registered trademarks pursuant to 15 U.S.C. 5 1 119. On the record in this case,
Plaintiff has presented no credible evidence that the public associates OBX with Plaintiff or its
products. However, Plaintiffs failure to supply such arguments and evidence does not
conclusively establish that every one of Plaintiffs trademark registrations should be cancelled.
Moreover, the Court notes that Defendant did not bring a counterclaim for cancellation, but
simply argued that cancellation was appropriate as part of its motion for summary judgment.

I2TheCourt also notes that Plaintiffs dilution claim is deficient not only because of a
failure to demonstrate ownership of trademark rights in OBX, but also because Plaintiff has
failed to show actual dilution. Actual dilution is a required element of a dilution claim.
CareFirst of Md., Inc. v. Firstcare P. C., 434 F.3d 263,274 (4th Cir. 2006). Plaintiff has
conceded that it has no evidence of damages or consumer confision. Courts will accept
circumstantial evidence of actual dilution where the marks are identical, however, a mere
similarity of the marks will not suffice. Id. Here, the marks are not sufficiently similar to
provide circumstantial evidence of actual dilution.