Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc.,

198 F.3d 1143 (9th Cir. 1999)

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Nature of the Case

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Facts

P and D currently compete in the Filipino-American telephone directory market in California. D's Filipino Consumer Directory has a white-pages section, which contains general reference information as well as a listing of people and organizations affiliated with the Filipino-American community. The Filipino Consumer Directory also has a yellow pages section containing information about businesses serving the Filipino-American community. D periodically uses the term 'Filipino Consumer Yellow Pages' in print advertisements directed at potential advertisers. These advertisements either reference the full name of the directory or are found within the Filipino Consumer Directory itself. In June 1996, P applied for registration of 'Filipino Yellow Pages.' In December 1996, the PTO refused registration of 'Filipino Yellow Pages.' The PTO stated: 'The proposed mark merely describes the goods and the nature and intended audience for the goods. Accordingly, the mark cannot be registered on the Principal Register based solely on an intent to use the mark in Interstate Commerce.' The PTO informed P that because its application 'indicated use of the mark for a significant time,' however, P could amend its application to seek registration based on acquired distinctiveness. The PTO further advised P that its amended application would have to include the following disclaimer: 'No claim is made to the exclusive right to use [the term] 'yellow pages' apart from ['Filipino Yellow Pages'].' P amended its application for trademark registration to seek registration based on acquired distinctiveness. The application remains pending at the current time. On August 2, 1996, P filed a complaint against D alleging (1) trademark infringement; (2) false designation of origin and false description of sponsorship or affiliation; (3) unfair competition and misappropriation of goodwill, reputation, and business properties; (4) misappropriation of FYP's right of publicity; (5) injury to business relationships; (6) unfair competition under California state law; and (7) trademark dilution under California state law. D moved for summary judgment, arguing that the term 'Filipino Yellow Pages' is generic and as such incapable of trademark protection. P contends that 'Filipino Yellow Pages,' is protectable under trademark law as a descriptive mark with a secondary meaning in the minds of consumers. The court granted D's motion for summary judgment: the term 'Filipino Yellow Pages' is generic, and as such incapable of serving as a trademark, and in the alternative P had failed to produce any admissible evidence of secondary meaning. P appealed.