In the

United States Court of Appeals

For the Seventh Circuit ____________

No. 06-2009

CUSTOM VEHICLES, INC.,

Plaintiff-Appellant,

v.

FOREST RIVER, INC.,

Defendant-Appellee.

____________

Appeal from the United States District Court

for the Northern District of Indiana, South Bend Division.

No. 3:04 CV 771—Robert L. Miller, Jr., Chief Judge.

____________

ARGUED DECEMBER 8, 2006—DECIDED FEBRUARY 7, 2007

____________

Before EASTERBROOK,Chief Judge, andPOSNER andRIPPLE,

Circuit Judges.

POSNER, Circuit Judge. Custom Vehicles sued Forest

River for trademark infringement, lost on summary

judgment, and appeals. In 1999 Custom (actually a predecessor, but we can ignore that detail) had created a product that it called “Work-N-Play.” It was a van the interior

of which could be converted by the owner in about an hour

from a mobile office to a camper, or vice versa, so that he

could, in Custom Vehicles’ words, “work out of it through

the week” and “play out of it on the weekends.” Hence the

name, which Custom Vehicles first registered with the
2 No. 06-2009

Patent and Trademark Office in 2000 as an “intent to use”

trademark—meaning that it would be used in commerce,

in a sense we explain later in this opinion, within six

months. 15 U.S.C. §§ 1051(b), (d); WarnerVision Entertainment Inc. v. Empire of Carolina, Inc., 101 F.3d 259, 260 (2d Cir.

1996).

Custom Vehicles sold its first van—though not under

the “Work-N-Play” name—that year. The following year

Forest River, a much larger company, decided to build a

towed van with a ramp door at the back and space inside

for a repair shop so that the van’s owner could both

transport his motorcycle or snowmobile and repair it

without taking it to a repair shop. Vans of this sort are

called “toy trailers,” because motorcycles, snowmobiles,

and the like are referred to by aficionados as “adult toys.”

Forest River called its new product “Work and Play,” a

name as apt to its dual use as to Custom Vehicles’.

Forest River began selling the vans in 2002, and by 2004

their annual sales exceeded $10 million. Meanwhile,

Custom Vehicles sold only one other “Work-N-Play”

van—its demo model, which it sold to a family member

of Custom Vehicles’ owner for $1,000—until 2004, when

it sold six more vans. Those were its first bona fide sales

of vans under the “Work-N-Play” mark, since its first

sale had not been under that name and the second sale,

to a relative for roughly 2.5 percent of the van’s normal

sales price, was not a commercially meaningful sale.

Both Custom Vehicles and Forest River promoted

their respective products at recreational-vehicle trade

shows. We may assume without having to decide that the

products are sufficiently alike that if “Work-N-Play” is a

valid trademark, Forest River’s use of “Work and Play” as

the name of its van is potentially infringing, though even
No. 06-2009 3

if the trademark is valid, Custom Vehicles, to prevail in an

infringement suit, would have to prove that Forest River’s

use of it would be likely to deceive or confuse. 15 U.S.C.

§ 1114(1)(a); Sullivan v. CBS Corp., 385 F.3d 772, 775-77

(7th Cir. 2004); 4 Thomas J. McCarthy, McCarthy on Trademarks and Unfair Competition § 23:1 (4th ed. 1996).

“Work-N-Play” is what in trademark law is called a

“descriptive” mark. That is, it does more than merely name

a brand; it describes the product category to which the

brand belongs (so Maxwell House is a brand, coffee the

product), in this case vans usable both for work and for

play. “Holiday Inn,” “All Bran,” and “American Girl” are

familiar examples of descriptive marks. A descriptive

mark is not a complete description, obviously, but it

picks out a product characteristic that figures prominently

in the consumer’s decision whether to buy the product or

service in question.

A seller must not be permitted to appropriate as the

name of its brand a term by which the public knows the

product category to which the brand belongs, for that

would make it difficult for other sellers of the same product to describe their brands, and this would impair competition. Hence a descriptive mark cannot be registered,

15 U.S.C. 1052(e); Park ‘N Fly, Inc. v. Dollar Park & Fly,

Inc., 469 U.S. 189, 193-94 (1985); Mil-Mar Shoe Co. v. Shonac

Corp., 75 F.3d 1153, 1157 (7th Cir. 1996)—with an important

exception. In time, a term that originally was descriptive

may come to signify to consumers a single brand. A new

product may require a descriptive name to introduce

consumers to it, but if the product catches on, the name

may come to be uniquely associated with the original

seller, and another term may come into use to describe the

product. For example, “All Bran” came to mean not any all-
4 No. 06-2009

bran cereal but a particular brand of all-bran cereal. Once

this happens, the term can be appropriated as a trademark because it has come to denote a single brand, not

the entire product, so that its use by other sellers of the

product would confuse consumers about the source of

what they were buying. In trademark parlance the descriptive mark will have acquired “secondary meaning” and

now can be enforced against sellers that use the term or a

confusingly similar variant. Park ‘N Fly, Inc. v. Dollar Park

& Fly, Inc., supra, 469 U.S. at 194; Peaceable Planet, Inc. v. Ty,

Inc., 362 F.3d 986, 988 (7th Cir. 2004); Blau Plumbing, Inc. v.

S.O.S. Fix-It, Inc., 781 F.2d 604, 609 (7th Cir. 1986); Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9-10

(2d Cir. 1976); see 15 U.S.C. § 1052(f).

So until and unless “Work-N-Play” achieved secondary

meaning as the name of Custom Vehicles’ product, it

could not be a legally protected trademark. And even if

it could be, its use by another firm would not infringe

because, unless Custom Vehicles’ descriptive mark had

achieved secondary meaning, a consumer would not

associate the name with Custom Vehicles and so could not

be confused if someone else used the name. 2 McCarthy

on Trademarks and Unfair Competition, supra, § 15:11. “[I]f

there is no secondary meaning, there is no mark to protect

and confusion is not possible.” Id.

Forest River could in that event, by dint of heavy advertising and a large sales volume, acquire secondary

meaning for its use of the name first chosen by Custom

Vehicles. This is the case of “reverse passing off,” where,

as we explained in Peaceable Planet, Inc. v. Ty, Inc., supra,

362 F.3d at 987, “the plaintiff complains that the defendant

is trying to pass off the plaintiff’s product as the defendant’s,” perhaps in order “to obliterate the plaintiff’s
No. 06-2009 5

corporate identity and prevent him from entering new

markets, where the defendant, having appropriated the

plaintiff’s trademark, would claim that the plaintiff was

the infringer.” Another name for this phenomenon is

“reverse confusion,” which “exists when a junior user

uses its size and market penetration to overwhelm the

senior, but smaller, user. The ‘senior user’ [that would be

Custom Vehicles in this case] is the first to adopt and use

a mark anywhere in the country. The ‘junior user’ [Forest

River in this case] is the second user, regardless of whether it adopts and uses a mark in a geographically remote

location. Reverse confusion doctrine protects the senior

user’s control of its mark and the goodwill created by

the mark from a junior user’s employment of the mark,

and protects the public from being deceived into believing that the senior user’s product emanates from, is

connected to, or is sponsored by the junior user.” Lucent

Information Management, Inc. v. Lucent Technologies, Inc., 186

F.3d 311, 316 (3d Cir. 1999). That may have happened in

the present case—prospective buyers who approached

Custom Vehicles at recreational-vehicle trade shows

thought when they saw the “Work-N-Play” brand name

that Custom Vehicles was affiliated with Forest River.

But Forest River’s swamping of Custom Vehicles’

marketing efforts infringes only if “Work-N-Play” is a

legally protected trademark; and it is difficult, maybe

impossible, for a small seller of an unpopular brand—a

seller who has negligible sales—to acquire secondary

meaning for its brand name. Such a seller is better off

adopting a fanciful or arbitrary mark, which is enforceable without proof of secondary meaning. When Forest

River launched its “Work and Play” van in 2002, Custom

Vehicles’ predecessor had made only one commercial
6 No. 06-2009

sale, and that sale wasn’t even made under the name

“Work-N-Play.” Few consumers could have thought that

“Work and Play” designated Custom Vehicles’ brand

rather than an indefinitely larger set of products usable

for both work and recreation.

We acknowledge that the difficulty of obtaining secondary meaning in a mark equally descriptive of a range

of products made by established firms may create a

dilemma for the producer of a genuinely novel product. As

we noted earlier, a descriptive mark will facilitate introducing a new product to the public, and so it is a natural

choice for a start-up, but if he adopts such a mark he may

find himself drowned out, as may have happened to

Custom Vehicles. However, a product that is genuinely

novel will be sheltered from competition (to a degree

anyway) by patent or trade secret law, or more commonly just by the headstart created by its being first in

the market; and so it will not be drowned out by a product sold by a larger competitor. Custom Vehicles’ basic

problem is that the only novel feature of its van—that it

can be used as both a mobile office and a recreational

vehicle—did not satisfy a large pent-up demand that, had

it materialized, might have conferred secondary meaning

on Custom Vehicles’ mark before anyone else could get

in on the act. Furthermore, the someone else was not a

competitor—Forest River was seeking to satisfy a different consumer demand. There was and is nothing

to prevent Custom Vehicles from adopting a new mark,

even a new descriptive mark—such as “Office-N-Rec”—

that might acquire secondary meaning. Its “Work-N-Play”

mark, however, described too much.

Having insufficient evidence to demonstrate secondary

meaning, Custom Vehicles falls back on its registered
No. 06-2009 7

trademark, noting that such a trademark, like a patent,

carries a presumption of validity. 15 U.S.C. § 1115(a);

CAE, Inc. v. Clean Air Engineering, Inc., 267 F.3d 660, 672-

73 (7th Cir. 2001). In the case of a registered descriptive

mark, therefore, the presumption is that it has acquired

secondary meaning. Packman v. Chicago Tribune Co., 267

F.3d 628, 638-39 (7th Cir. 2001). But the act of registration

merely begins the process that leads to the presumption.

Bare registration is not enough. Trademarks cannot be

“banked” or “warehoused”—that is, you cannot register

thousands of names, unrelated to any product or service

that you sell, in the hope of extracting a license fee from

sellers of products or services for which one of your names

might be apt. Cf. Harrods Ltd. v. Sixty Internet Domain

Names, 302 F.3d 214 (4th Cir. 2002). You must certify

that the product is in use in commerce—defined as “the

bona fide use of a mark in the ordinary course of trade,

and not made merely to reserve a right in a mark,” 15

U.S.C. § 1127—within six months after the trademark

was registered. 15 U.S.C. § 1051(d). Within those six

months Custom Vehicles sold a grand total of one van,

and the trademark was not used in the sale. Even if it had

been, that would not have been enough to place the

trademark in the “ordinary course of trade.” Lucent Information Management, Inc. v. Lucent Technologies, Inc., supra,

186 F.3d at 315-17.

We suppose that one sale of a $150 million airplane or

yacht within the first six months might be sufficient use,

see 3 McCarthy on Trademarks and Unfair Competition, supra,

§ 19:110, for it would be enough to seize the attention of

the relevant market. See General Healthcare Ltd. v. Qashat,

364 F.3d 332, 334-35 (1st Cir. 2004); New England Duplicating

Co. v. Mendes, 190 F.2d 415, 418 (1st Cir. 1951). But not one
8 No. 06-2009

sale of a van. That sale would have been too obscure an

event to alert any significant number of consumers that

“Work-N-Play” had a definite referent (even if the name

had been used in the sale); and until that happens, the

creator of the mark should not be able to appropriate it. For

such a practice, by creating a trademark thicket, would

make it difficult for new producers to find suitable names

for their products that had not already been appropriated

to no worthier end than providing the premise for an

infringement suit.

We acknowledge that Chance v. Pac-Tel Teletrac Inc., 242

F.3d 1151, 1157 (9th Cir. 2001), holds that “where a mark

has been placed on goods, a single sale or shipment may

be sufficient to support an application to register the

mark, providing that this shipment or sale has the color

of a bona fide transaction and is accompanied or followed

by activities which would tend to indicate a continuing effort or intent to continue such use and place the

product on the market on a commercial scale within a

time demonstrated to be reasonable in the particular

trade.” But the court derived this wordy formula (what is

“the color” of a “bona fide transaction”?) from HydroDynamics, Inc. v. George Putnam & Co., 811 F.2d 1470, 1472-

74 (Fed. Cir. 1987), a case decided before Congress in

1989 amended the trademark law to require that to be

entitled to the presumption of validity a trademark must be

used in the “ordinary course of trade.” Unless, as in our

yacht example, the product is unusually expensive, a

single sale, followed by frenetic but futile efforts to make

a second sale, hardly justifies allowing the seller to appropriate the mark, denying its use to sellers who can

actually sell.

The formula is especially inapt to a descriptive mark, for

without significant sales (always excepting the case of
No. 06-2009 9

the superexpensive prototype) the mark could not achieve

secondary meaning. Cf. PaperCutter, Inc. v. Fay’s Drug Co.,

900 F.2d 558, 562-65 (2d Cir. 1990). This is critical, because

the presumption of validity that registration creates is

easily rebuttable, since it merely shifts the burden of

production to the alleged infringer. Door Systems, Inc. v.

Pro-Line Door Systems, Inc., 83 F.3d 169, 172 (7th Cir. 1996);

KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408

F.3d 596, 604 (9th Cir. 2005); Retail Services, Inc. v. Freebies

Publishing, 364 F.3d 535, 542 (4th Cir. 2004). Exclusive use

of such a mark, in contrast to exclusive use of a fanciful

mark, such as “Exxon” (that is, a made-up word), or of an

arbitrary mark, such as “Apple Computer” (arbitrary

because a computer has nothing to do with an apple), or

even of a suggestive mark, such as “Mr. Clean” or “Gleam

Toothpaste” (suggestive because it calls to mind some

attribute of the products), can, as we said, by appropriating

the term by which consumers know the product space in

which the sellers compete, impair competition by impeding the ability of competitors to indicate that their brands

are in the same product space. Even if Custom Vehicles’

registration were in force, it would not overcome the

overwhelming evidence that “Work-N-Play” never became associated in consumers’ minds with Custom Vehicles’ vans to the exclusion of other dual-use vans. See, e.g.,

Petro Stopping Centers, L.P. v. James River Petroleum, Inc.,

130 F.3d 88, 93-94 (4th Cir. 1997); PaperCutter, Inc. v. Fay’s

Drug Co., supra, 900 F.2d at 562-65.

In the absence of registration, a producer can still obtain

relief by proving that the defendant is using a mark that

“is likely to cause confusion . . . as to the origin, sponsorship or approval of his or her goods.” Lanham Act, § 43(a),

15 U.S.C. § 1125(a); Wal-Mart Stores, Inc. v. Samara Bros.,
10 No. 06-2009

Inc., 529 U.S. 205, 209 (2000); 5 McCarthy on Trademarks

and Unfair Competition, supra, § 27:14. But as we said earlier,

without proof of secondary meaning there is no basis

for thinking a descriptive mark the name of a brand—no

basis therefore for supposing that consumers would

think Forest River’s van “Work and Play” had been

produced by Custom Vehicles instead.

AFFIRMED.

A true Copy:

Teste:

 _____________________________

Clerk of the United States Court of 

Appeals for the Seventh Circuit 

USCA-02-C-0072—2-7-07