Government contractor loses trademark dispute against cloud storage provider. IRONHAWK v. DROPBOX

A trademark is something that the producer of a product uses to distinguish its products from competitors’ products. The association that consumers make between a trademark and a desirable product is the primary value of a trademark. Trademarks that are more distinctive are easier for consumers to identify. Trademark distinctiveness ranges from arbitrary or fanciful, to suggestive, followed by merely descriptive matter and finally generic terms. The strength of a trademark is directly related to the distinctiveness of the trademark. The distinctiveness of a trademark directly affects whether a trademark can be registered on the principal trademark register of the United States Patent and Trademark Office and how courts will treat the trademark in a trademark infringement action.

Fanciful, arbitrary, and suggestive trademarks, often referred to as “inherently distinctive” marks. Suggestive trademarks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services.

Merely descriptive marks are those that describe an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. A trademark is also considered merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services. The determination of whether a mark is merely descriptive must be made in relation to the products to which the trademark is applied, not in the abstract. This requires consideration of the context in which the trademark is used or intended to be used in connection with those products, and the possible significance that the mark would have to the average purchaser of the goods or services in the marketplace.

A trademark that is considered merely descriptive is not given strong protection as a trademark without proof of of acquired distinctiveness or secondary meaning. Secondary meaning indicates that although the mark is on its face descriptive of the goods or services, consumers recognize the mark as having a source indicating function. Once it can be shown that a descriptive term or phrase has achieved this “second meaning”, a protectable trademark is developed. Secondary meaning can be achieved through long term use, or large amounts of advertising and publicity. The acquisition of secondary meaning is often proven through the use of consumer surveys, that show that consumers recognize the mark as a brand, such as “FORD”, as opposed to a descriptive term, such as “reliable”.

IRONHAWK TECHNOLOGIES, INC. v. DROPBOX, INC., 18-cv-01481 (C.D.CA 2018) is a case which involves a trademark which failed to meet the standard for protection because it was considered merely descriptive. The plaintiff in this case is a government contractor that sells various types of data services. The plaintiff uses the phrase “SmartSync” to brand one of its software products. The software product synchronizes data between devices. The defendant is a cloud storage service provider that allows uses to back their files up on the internet. One of the features of the defendant’s service is referred to as “Smart Sync”. The plaintiff sued the defendant for trademark infringement, claiming that the defendant’s use of the phrase “Smart Sync” was causing consumer confusion between the plaintiff and defendant’s products. The defendant moved for summary judgement.

The Court examined several factors and granted summary judgment in favor of the defendant. The court noted that the level of protection afforded to a particular trademark is dependent upon the mark’s conceptual and commercial strength, with stronger marks receiving more protection. The plaintiffs product performs the task of “synchronization, replication, and distribution” of data. Based on this court found that “SmartSync” mark appears to be descriptive. No evidence of an acquired secondary meaning was introduced by the plaintiff. The defendant introduced evidence that “Smart Sync” is used on products that range from skin cream to automobiles. The court concluded that the plaintiff’s weak mark is entitled to little or no protection.

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