Libya v. Miski

To establish a protected right in a descriptive mark, a party must demonstrate, with survey data or other evidence, that the mark has obtained secondary meaning in the marketplace.

Opinion (Walton): Libya and the Embassy of Libya (collectively the Embassy) sued Mr. Miski under the Lanham Act and the AntiCybersquatting Consumer Protection Act alleging that his URL, LibyanEmbassy.com, infringed their trademarks. Mr. Miski is an expeditor who assists customers in the legalization of documents by certifying them so that the Embassy can complete the legalization process. The case was stayed after the completion of oral arguments because of the “political instability in Libya” in the spring of 2011. The district court began its analysis by considering the validity of the Embassy’s unregistered marks. The court determined that the terms “Libyan Embassy” and “Embassy of Libya” were descriptive, because they described the services provided by the Embassy, and the terms “conjure[d] the idea of a physical space,” rather than a brand or source. The court then determined that the terms did not have secondary meanings capable of rendering them protectable. The court based its determination on the Embassy’s failure to produce survey data showing a secondary meaning; and because the Embassy had not continuously provided legalization services for a sufficient length of time since its U.S. office was closed in 1981. Additionally, bilateral relations between the United States and Libya were frozen from 1986 until 2004, preventing the type of transactions with Libya that require legalization services. Accordingly, the court found in favor of Mr. Miski.