Lube-Tech Liquid Recycling, Inc. v. Lee's Oil Service, LLC

A descriptive mark (conveying an immediate idea of the ingredients, qualities or characteristics of the goods) was protectable only if the mark was shown to have acquired a secondary meaning.

Opinion (Doty): In 2005 Lee Randt sold Randt Oil to Lubrication Technologies ("Lube-Tech"). In 2011, Lee Randt and his wife Elaine Randt formed Lee's Oil Service ("Lee's Oil"), which provided the same services as Lube-Tech. Lube-Tech alleged that Lee's Oil copied their logo and company manifest in violation of the Lanham Act. Lube-Tech argued that its logo and Lee's Oil logo were practically identical and designed to create customer confusion. To prove a trademark infringement claim, a plaintiff must show that it has a valid protectable mark and that there is a likelihood of confusion between its mark and the defendant's mark. Lube-Tech's logo is not registered with the United States Patent and Trademark Office, and thus Lube-Tech had to establish that the logo was a protectable mark. The court held that Lube-Tech's mark was descriptive because it conveyed an immediate idea of the ingredients, qualities or characteristics of the goods, and thus was protectable only if the mark was shown to have acquired a secondary meaning. Lube-Tech made no showing of secondary meaning and subsequently the logo was not entitled to trademark protection. Lube-Tech's allegation that Lee's Oil copied their manifest fell under trade dress infringement. Trade dress of a product is the total image of a product, not the individual features. To establish a claim for trade dress infringement a plaintiff must demonstrate its trade dress is: (1) inherently distinctive or has acquired distinctiveness through secondary meaning; (2) nonfunctional; and (3) its imitation would result in a likelihood of confusion in consumers' minds as to the source of the product. Lube-Tech could not identify discrete elements that comprise its trade dress nor could it demonstrate that the manifest is nonfunctional. As a result the manifest is not subject to trade dress protection. Since Lube-Tech's logo was not a protectable mark and it was not able to prove trade dress infringement, Lee's Oil's motion for summary judgement was GRANTED.