VA`s position, which dissent readily accepts, presupposes two essential facts, of which VA has presented no evidence: (1) consumers who call 1-800-SKI-VAIL know that there is only one ski area in Vail, and (2) the same consumers know that the word Vail means this ski area. A consumer who does not know these particular facts would probably not be confused by calling 1-800-SKI-VAIL because he could not be confused about facts of which he does not know. In other words, consumers cannot dial an alphanumeric phone number that believes it is associated with VA and/or its ski resort facilities if they do not know the VA brand in a particular sense. See McCarthy, op. cit. cit., § 15-11, pp. 15-23 (“A buyer who does not recognize the applicant`s “trademark” and does not distinguish it from others cannot be confused.”). It simply does not follow from the Protocol that the ordinary consumer who chooses the 1-800 SKI-VAIL has specific knowledge of `secondary importance` necessary for any confusion between the two brands. Assuming that consumers have such knowledge, dissent is intended to relieve the VA of its burden of proof. See dissent, p.
875. The other three elements of VTC`s trademark serve only to emphasize the importance for which Vail Associates has protected VAIL as a trademark. VTC`s inclusion of the term “ski” in an alphanumeric phone number goes to the heart of Vail Associates` business and creates a similar and confusing meaning. Contrary to the Regional Court`s conclusion, the use of the word “ski” in this context does not only describe the activity of sliding on snow. Instead, the word “ski” replaces the perception that ride-hailing services are generally tied to Vail`s geographic area and directly connect ride-hailing activities to Vail Resort in the consumer`s mind. Even the numeric prefix of the VTC mark does not distinguish its meaning. The numbers simply tell the consumer that the brand is a way to contact the company offering skiing in Vail via a toll-free phone number. Since there is only one ski resort in Vail, a consumer who calls VTC can only have one thing in mind: skiing at Vail Resort.1 11. Descriptive terms, including geographically descriptive terms such as “Vail”, may not be registered as a trademark of goods or services until they have acquired secondary meaning as “distinctiveness of the applicant`s goods in commerce”.
15 U.S.C. § 1052(f). `[T]he essentially exclusive and continuous use as a trade mark by the applicant in trade during the five years preceding the date on which distinctiveness is claimed` constitutes prima facie evidence that a mark has acquired minor importance. In the present case, the District Court held that `[i]n an identifier of the services for which [VAIL] has been registered, the word mark is weak and describes a geographical location where those services are provided rather than the services themselves`. Aplt. Annex 446. The evidence does not support this conclusion. VAIL is a descriptive term that has acquired secondary meaning – world-class ski resort services. The VTC expert himself testified that VAIL is a strong brand “in the specific context of ski resort services, services for which it is registered and for which it is widely known”. Aplt. Annex 874. The expert later testified that the commercial strength of the VAIL brand was “probably known worldwide”.
Aplt. Annex 882. Vail Associates has presented testimonials that Ski Magazine has ranked Vail number one in the ski resort in thirteen of the last seventeen years. This reputation is supported by extensive marketing efforts: $13 million in 2003 and more than $100 million since the VAIL trademark was registered in 1989.10 1-800-SKI-VAIL is very similar to the VAIL trademark in terms of sight, sound and meaning. The defendants added 1,800 skis to the plaintiff`s trademark, but this hardly changes the conclusion. 1-800 is simply a generic area code for a toll-free number. SKI is not just generic; as used by the defendants, it recalls the original facilities for which the plaintiff`s VAIL mark is world-renowned. We refuse to extend unwarranted service mark protection to VA, which we retain primarily as a geographic term describing a ski resort in the Colorado Rockies. Such an expansion would jeopardize the countless number of retailers, merchants and innkeepers in and around Vail who use the town`s name to advertise their goods and services.14 Ultimately, the lack of evidence of VA suggesting a likelihood of confusion could lead to the assumption that VA is really “disconnecting” an alphanumeric telephone line. which provides easy access to VA`s actual service competitors.
The documentary evidence simply refutes any notion that VA`s claim in the Lanham Act relates to the likelihood of confusion. On the contrary, VA`s claim appears to be aimed more at restricting access to its competitors by removing a channel that offers simple, free and easily accessible access to that competition by means of a vanity or alphanumeric telephone number. Given that the factual records, viewed in a light favorable to the District Court`s judgment, support the court`s conclusion that VA could not prove any likelihood of confusion, the District Court`s judgment is perhaps the second most important factor in our review is Vail`s strength as a service mark. On this point, VA is no better off because there is nothing in the case file or the applicable law to indicate that the District Court clearly erred in concluding that the Vail brand is not particularly strong. Of course, the Vail brand has a secondary meaning. See Park `N Fly, Inc. v Dollar Park & Fly, Inc., 469 U.S. 189, 194, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985) (recognition of a descriptive mark can only be registered if it is proved that the mark has acquired secondary meaning).11 A likelihood of confusion about a descriptive term can never exist without secondary meaning. See McCarthy, op. cit.
cit., § 14:9, pp. 14-35. However, the existence of a secondary meaning does not confer on the proprietor of the mark an exclusive right to use the mark in its original descriptive sense. The secondary meaning confers on the proprietor of the mark “an exclusive right not in the original descriptive sense, but only in the secondary right relating to the goods of the proprietor of the mark”. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122, 125 S.Ct. 542, 160 L.Ed.2d 440 (2004). In the context of slavery, it is therefore interesting to consider the second meaning of emancipation, a concept that every teenager will say is not much different from the first.
The second face of emancipation is the face of freedom vis-à-vis parents. It means having become one`s own master through the exercise or appropriation of laws. In plain language, “emancipation” means “free from servitude, oppression, or servitude; to liberate. And, of course, simple English has its place – as insignificant as it may sometimes seem – at the table of law. In fact, simple English has a fairly revered place in law, with many legal arguments reduced to the meaning and intent of words. Remember, “Does it depend on what `is`?” “A secondary meaning only exists if most consumers don`t see the word as descriptive at all, but as the name of the product [or service].” Donchez, 392 F.3d to 1218; see Retail Servs. v. Freebies Publ`g, 364 F.3d 535, 539 (4th Cir.2004) (“The assertion that a mark has acquired `secondary significance` is an abbreviation for the assertion that a descriptive mark has become sufficiently distinctive to “establish in the minds of purchasers a mental connection between the alleged mark and a single source of the product”).
(quoted 2 McCarthy § 15:5) (emphasis added). A geographically descriptive term, like all other descriptive terms, takes on a secondary meaning when potential buyers associate the term with a particular source, even if the buyer cannot identify that source. c. Clover Club Foods Co., 805 F.2d 920, 924 (10th Cir.1986); see also Dieter, 880 F.2d, p. 329 (indicating that an indisputable mark is “at least descriptive with a secondary meaning and therefore a relatively strong mark”). Vail is one word. It is what it is. There are four letters in a certain order, and that has some clear meaning in this context. The 1-800-Ski-Vail consists of four components.
It is obviously a long distance number. It contains Vail as a component, but it`s only one of four. In fact, it is the last one. They are very different from each other. But faith enters the chariot and sees the glorious land of promise, the heritage of our race. 13. As part of the devaluation of the VTC expert`s testimony, the dissent states that he “knows that when you ski in Vail, you ski at Vail Associates”: “The expert testified that he was not a skier, that he only visited Vail in the summer and that he did not know if you could ski in Vail other than through Vail Associates. Conversely, VTC`s intention to create confusion was aimed at consumers looking for ski holidays, people who are much more familiar with the specific, non-generic meaning created by the combination of the words “ski” and “Vail” than the VTC expert. Dissent at 876.