Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA393228
`ESTTA Tracking number:
`02/14/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91192029
`Plaintiff
`Zachry American Infrastructure, Inc.
`JANET F SATTERTHWAITE
`VENABLE LLP
`en575 7TH STREET NW
`WASHINGTON, DC 20004
`UNITED STATES
`Trademarkdocket@venable.com,jfsatterthwaite@venable.com,pjwyles@venabl
`e.com
`Other Motions/Papers
`Janet F. Satterthwaite
`jfsatterthwaite@venable.com,
`pjwyles@venable.com,trademarkdocket@venable.com
`/Janet F. Satterthwaite/
`02/14/2011
`73470-281318 MOTION.pdf ( 7 pages )(366305 bytes )
`MOTION EX A.pdf ( 32 pages )(1723333 bytes )
`MOTION EX B.pdf ( 28 pages )(1852352 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Zachry American Infrastructure, LLC,
`Opposer,
`
`v.
`American Infrastructure, Inc.,
`Applicant
`
`Attorney Ref.: 73470- 281318
`
`Consolidated Opposition Nos.
`91192029 (parent)
`91192030
`91192031
`91196513
`91196514
`
`MOTION FOR RESUMPTION OF PROCEEDINGS
`AND FOR JUDGMENT IN FAVOR OF OPPOSER
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`Opposer Zachry American Infrastructure, LLC, by its attorneys, hereby moves, pursuant to
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`Trademark Rule 2.117(a), and TBMP Section 510.02, for resumption of
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`all proceedings and entry
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`of final judgment in all proceedings in favor of Opposer consistent with the fully litigated, final
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`determination of
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`the civil action between the parties
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`in the United States District Cour for the
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`Eastern District of
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`Pennsylvania in
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`American Infastructure v. Zachry Construction Corp. and
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`Zachry American Infrastructure, Inc., in which the District Cour ruled on sumar judgment that
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`the term AMERICAN INFRASTRUCTURE for Applicant's services was not inherently distinctive
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`and that Applicant has failed to prove secondar meaning, thus finding that Applicant had no
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`trademark rights in the term AMERICAN INFRASTRUCTURE. A copy of
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`the Cour's opinion is
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`attached as Exhibit A hereto.l Applicant's time to appeal the Cour's final ruling expired on Januar
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`27,2011, and no appeal was taken; therefore, the
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`judgment of
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`the District Court is finaL.
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`The Notices of Opposition alleged that the term AMERICAN INFRASTRUCTURE is
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`descriptive, geographically descriptive, and generic with respect to the goods and services set forth
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`in the applications. Those goods and services are: Business information management in the
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`field of
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`heavy civil construction; supply services for third parties in the field of construction
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`materials, namely, purchase of aggregate, asphalt, and concrete for other companies;
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`Building construction for residential, commercial, and institutional use; excavation services;
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`Quarry services in the nature of stone-crushing., in connection with Opposition Nos.
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`91192029,91192030,91192031 and 91196513; and Construction consultation; construction
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`management; construction planning; consultation services for the construction of water and
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`wastewater plants; construction of water and wastewater plants; laying and construction of
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`pipelines; road and highway construction; road and highway paving services; bridge
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`construction in Class 37, in connection with Opposition No. 91196514 (based on a claim of
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`acquired distinctiveness based only on a simple claim of
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`five years' use.)
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`As the Trademark Trial and Appeal Board has already found in granting the various
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`motions to suspend the subject oppositions, there was significant overlap between the issues
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`raised in the Notices of Opposition and the issues before by the District Court. In paricular, the
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`Board has noted, when ordering suspension of the various oppositions, that in the District Court
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`case, "applicant must establish that it has enforceable rights in the AMERICAN
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`INFRASTRUCTURE component of its involved marks, i.e. that such component is distinctive."
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`Order ofTTAB Dated November 23,2009, in consolidated Oppositions Nos. 91192029, 30 and
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`31. The ruling of the District Cour found that applicant had no inherent or acquired
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`distinctiveness in the term
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`AMERICAN INFRASTRUCTURE. As such the issues as decided
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`by the District Court are completely dispositive of the issues raised in the Notices of Opposition.
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`In the District Cour case, Applicant accused Opposer of infrngement based on Opposer's
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`use of
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`the term "American
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`Infrastructue" as par of
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`its trading name ZACHRY AMERICAN
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`INRASTRUCTURE. In so doing, Applicant relied in its complaint on a very wide variety of
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`1 Defendant in the District Court case Zachary American Infrastrcture Inc. is now an LLC and the LLC is the part
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`-2-
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`services which encompass all the services covered in the opposed applications. See. e.g., Paragraph
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`10 of the First Amended Complaint in which Applicant asserts that it has used the opposed mark "
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`to identify a wide variety of construction management and related services." Applicant fuher
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`noted in the Complaint that it uses its AMERICAN INFRASTRUCTUR mark in connection with
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`"numerous construction services including: construction consultation, construction management;
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`construction planing, building construction for residential, commercial, and institutional use;
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`consultation services for the constructions of water and wastewater plants; constructions of
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`pipelines; construction of roads, highways and bridges, excavation services; material supply goods
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`and services relating to aggregate, asphalt, concrete and crushed stones." See First Amended
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`Complaint in CA-08-2701 (ED Pa), Paragraph 11, Exhibit B hereto.
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`Opposer defended on the grounds that the term "American infrastructure" is descriptive,
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`geographically descriptive, and generic of all of
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`the services offered by Applicant.
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`The paries fied, fully briefed, and argued cross-motions for sumar judgment. On
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`December 28, 2010, The District Cour ruled in favor of Opposer, finding that the term
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`AMERICAN INFRASTRUCTURE as used by Applicant was not inherently distinctive but was
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`descriptive, and that Applicant has failed to prove secondar meaning even to the level of rising to a
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`genuine issue of material fact for triaL.
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`First, the Cour found that the term AMERICAN INFRASTRUCTURE is not suggestive,
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`but ismerely descriptive. Op. at 11-12, Exh. A hereto. "It does not take imagination or a 'mental
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`leap' to determine that a company named 'American Infrastructure' provides services that include
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`construction management, construction planng, and construction of
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`water, wastewater plants,
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`pipelines, roads, highways and bridges." Id. The Cour also noted that Applicant has conceded this.
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`to the oppositions. As such there is complete privities between this Zachry entity in the court and IT AB cases.
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`-3-
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`Id. at 12. The Cour then ruled that Applicant has not established secondar meaning either. Op. at
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`13-27. The Court went through fifteen pages of analysis of Applicant's evidence of alleged
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`secondar meanng. One of the consolidated oppositions related to an application that was
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`approved under Section 2( t) on the most basic of declarations of five year's substantially exclusive
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`use. Both the Board and the Cour note that not only is the Trademark Office's determination under
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`Section 2(t) not binding on the cour, but the Board noted that in an inter pares proceeding, its
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`ruling might be different in this case, and Cour quoted the Board on
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`this point:
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`"on this record (referring only to a declaration of distinctiveness with no evidence in support), we
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`are satisfied that applicant has made substantially exclusive use of the wording 'AMERICAN
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`INRASTRUCTUR' so that it had acquired distinctiveness under Section 2(t)" but the Board also
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`noted that "in an inter pares proceeding involving a different record, our ruling might be different."
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`Op. at 28, citing/quoting opinion ofTTAB, July 21 2010.
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`The Court noted that Applicant had relied on alleged common-law rights in AMERICAN
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`INFRASTRUCTURE for" a wide variety of construction services, including, construction
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`management, construction planing, and construction of
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`water, wastewater plants, pipelines, roads,
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`hig~ways and bridges." Op. at 3. There is no doubt, however, that the Cour's findings apply
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`broadly to all the categories of goods and services set forth in the various applications that are the
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`subjects of
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`these consolidated oppositions. The cour noted that while arguably some of Applicant
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`services, such as quar services, might not "traditionally be deemed 'infrastructure'...we are
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`satisfied that as a whole, the mark, American Infrastructure, fairly describes Plaintifs services.
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`We therefore reject Plaintiffs arguent that "American Infrastructue" is suggestive." Op at 11-12.
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`(emphasis added) Moreover, the entire scope of services claimed in each of the subject applications
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`was before the Cour. The Amended complaint asserted rights in "numerous construction services
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`-4-
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`including: construction consultation, construction management; construction planng, building
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`construction for residential, commercial, and institutional use; consultation services for the
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`constrctions of
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`water and wastewater plants; constrctions of
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`pipelines; construction of
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`roads,
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`highways and bridges, excavation services; material supply goods and services relating to
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`aggregate, asphalt, concrete and crushed stones." The Cour, in granting summar judgment, found
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`that Applicant had not established any rights to the term AMERICAN INFRASTRUCTUR under
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`inherent or acquired distinctiveness with respect to any of its goods or services. The Cour did not
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`care out any of these services. As such all the issues were before the Court, and it is thus clear that
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`the Cour rejected applicant's claim of inherent or acquired distinctiveness for all services alleged in
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`the Complaint, which are broadly identical to all services set forth in the applications that are the
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`subject of
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`the consolidated oppositions. The Cour's ruling was sweeping and complete, and did
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`not suggest that there were any open issues or issues not decided.
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`In sumar, the District Cour noted that
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`it owns the mark; and (3) defendant's use of
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`in order to prevail on its claim of trademark infringement and unfair competition under the
`Lanam Act, Plaintiff (applicant) must establish that (l) its mark is valid and protectable; (2)
`the mark to identify goods and services is likely
`to cause confusion. ...Having considered both motions for summar judgment, because we
`has not pointed to evidence of secondar meaning, it cannot establish
`the mark. Thus, we need not undertake any further analysis. Defendant is entitled
`validity of
`to sumar judgment.
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`find that Plaintiff
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`Op at 29 (emphasis added.)
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`Both the Cour and the Board in these proceeding have already stated that the Cour's
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`findings of
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`law and fact are binding on the Board, but that the Board canot bind the Cour. .2
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`2 See Op. at 28; see also Order of
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`November 23, 2009 in these Consolidated Opposition Nos.
`91192029,2030, and 2031:. " (T)he district court's findings would be binding upon the Board,
`whereas the Board's findings would be merely advisory to the district court. See American
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`-5-
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`As such the Board is bound to find that the terms AMERICAN INFRASTRUCTURE are inherently
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`descriptive and, notably in the case of
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`the application approved under Section 2(t), have not
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`acquired secondar meanng with respect to all the services listed in the subject applications. Since
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`Applicant refused to disclaim these terms within those applications that contained other terms, all
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`those applications must be rejected and judgment granted in favor of Opposer.
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`By:
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`Respectfully submitted,
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`~~ ~') ~t~.~~
`
`Wiliam D. Coston
`Mark B. Harrison
`Janet F. Satterthwaite
`Venable LLP
`575 7th St NW
`Washington DC 20004
`202-344-4000
`j fsatterthwaiteCfvenable.com,
`trademarkdocket(§venab le.com
`Attorneys for Opposer
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`Dated: February 14,2010
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`Dc2/1/1157379
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`Bakeries Co. v. Pan-O-Gold Baking Co., 2 USPQ2d 1208 (D.C. Minn 1986); Other Telephone
`Co. v. National Telephone Co., 181 USPQ 79 (Comm'r Pats. 1974); Whopper-Burger, Inc. v.
`Burger King Corp., 171 USPQ 805 (TTAB 1971)."
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`-6-
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`

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`CERTIFICATE OF SERVICE
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`I, hereby certify that on the 14th day of
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`February, 2011, a true copy of
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`the foregoing
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`MOTION FOR RESUMPTION OF PROCEEDINGS AND JUDGMENT IN FAVOR OF
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`OPPOSER was sent via first class mail, postage pre-paid to:
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`Timothy Pecsenye, Esq.
`Blank Rome LLP
`9th Floor
`One Logan Square
`Philadelphia PA 19103
`
`~,SJ~
`
`Janet F. Satterthwaite
`
`Dc2/Jl1157379
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`-7-
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`EXHIBIT A
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`
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`EXHIBIT AEXHIBIT A
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`

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`Case 2:08-cv-02701-MSG Document 70 Filed 12/28/10 Page 1 of 29
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF PENNSYLVANIA
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`AMERICAN
`INFRASTRUCTURE,
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`Plaintiff,
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`CIVIL ACTION
`
`v.
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`NO. 08-2701
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`ZACHRY CONSTRUCTION
`CORP., et. al.,
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`Defendants.
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`Goldberg, J.
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`December 28, 2010
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`MEMORANDUM OPINION
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`In this trademark infringement case, Plaintiff, American Infrastructure, Inc. (AI), seeks to
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`enjoin Defendants, Zachry Construction Corp. (ZCC) and Zachry American Infrastructure (ZAI),
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`from using the "Zachry American Infrastructure" mark and logo. i Plaintiff s complaint alleges
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`trademark infringement in violation of the Lanham Act, 15 U.S.c. § 1125, et seq.,i and unfair
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`competition under Pennsylvania common law. Before the Court are Plaintiffs and Defendants'
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`i In its motion for summary judgment, Plaintiff sought equitable relief, in the form of an
`injunction and an accounting of Defendants' profits, as well as actual damages. (PI.' s First Am.
`CompI. 10-11.) However, at oral argument, Plaintiffs counsel stated that the only remedy it is
`now seeking is an injunction enjoining Defendants from using "Zachry American Infrastructure"
`in the five states in which the Plaintiff claims its footprint is established. (Oral Arg. Tr. Oct. 27,
`2010,72.)
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`2 Specifically Plaintiff is alleging (1) false designation of origin, false description, and
`false representation under the Lanham Act, 15 U.S.c. § 1125(a) and (2) infringement ofa
`common law mark under the Lanham Act, 15 U.S.C. § 1125(a). (First Amended Complaint.)
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`1
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`

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`Case 2:08-cv-02701-MSG Document 70 Filed 12/28/10 Page 2 of 29
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`cross motions for summary judgment. For the reasons set forth below, Plaintiffs motion wil be
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`denied and Defendants' motion wil be granted.
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`I. BACKGROUND
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`Unless specified, the following facts are undisputed.
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`A. American Infrastructure
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`Plaintiff, American Infrastructure, Inc., is a Delaware corporation with its principal place of
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`business in Worcester, Pennsylvania. Plaintiff began operating in Pennsylvania in 1939 under the
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`name "Allan A. Myers & Son." In 1998, Plaintiff changed its trade name to "American
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`Infrastructure," but in Pennsylvania and Delaware, Plaintiff continues to operate under the name
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`"Allan A. Myers, a company of American Infrastructure." (Defs.' St. of
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`Facts ~~ 1,6, 7, 13.)3
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`In 1998, Plaintiff acquired the Maryland construction business "T.C. Simons." In 2000,
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`Plaintiff acquired a Virginia business "R.G. Griffth." In 2003, Plaintiff renamed its Maryland
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`business "American Infrastructure - Maryland" and in 2007 renamed its Virginia business "American
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`Infrastructure - Virginia." (Defs.' St. of
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`Facts ~~ 7,9-11.)
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`Today, after the above acquisitions and name changes, Plaintiff
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`is made up of
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`four business
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`units: Allan A. Myers; American Infrastructure - Maryland; American Infrastructure - Virginia; and
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`Independence Construction Materials,4 all of which conduct business in the Mid-Atlantic region,
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`which includes Pennsylvania, New Jersey, Delaware, Maryland, and Virginia. (PI.'s Br. Summ. 1.
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`3 Defendants' Statement of Undisputed Facts will be cited to as "Dèfs.' St. of Facts" and
`Facts."
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`Undisputed Facts as "PI.'s St. of
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`Plaintiffs Statement of
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`4 This entity originated in 1998 when Plaintiff consolidated its materials divisions. (PI. 's
`Opp. to Defs.' Br. Summ. J. Ex. Q, AI 000220.)
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`2
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`

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`Case 2:08-cv-02701-MSG Document 70 . Filed 12/28/10 Page 3 of 29
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`2; Defs.' St. of
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`Facts ~ 15.)
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`According to Plaintiff, since 1998 it has used "American Infrastructure" as its service mark
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`and trade name to identify a wide variety of construction services including, construction
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`management, construction planning, and construction of water, wastewater plants, pipelines, roads,
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`highways and bridges. (PI.'s Br. Summ. J. 2.) Plaintiff claims that it began using the "American
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`Infrastructure" mark in three stylized formats in 2000: (1) "American
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`Infrastructure" plus its icon;
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`(2) "Allan A. Myers, a company of American Infrastructure" and the icon; and (3) "R.G. Griffth,
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`a Company of American Infrastructure" and the icon. (PI.'s Br. Summ. 1. 3.)
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`Defendant takes issue with Plaintiff s claim that it uses "American Infrastructure" to identify
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`its services, and asserts that Plaintiff uses a variety of names and marks, which are independent,
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`subject to separate trademark applications and differ in appearance. Defendants also argue that
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`Plaintiffis involved in infrastructure construction but has not presented evidence to support its claim
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`that it engages in construction management or
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`planning. (Defs.' Resp. to PI. 's St. of
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`Facts ~~ 1,10.)
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`According to Plaintiffs, between 1998 (when the mark was adopted), and 2008, its annual
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`revenues grew from $142 milion to almost $485 million, with contracts ranging in value from
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`$250,000 to $170 million. Plaintiff claims to have 1,500 full-time employees and "hundreds of
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`satisfied customers," 40% to 60% of which are government entities. Plaintiff is approximately the
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`25th largest heavy civil contractor in the countr and the 11 th largest contractor in the Mid-Atlantic.
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`(PI.'s Br. Summ. J. 2-3.)
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`Defendants note that Plaintiffs revenue growth was due, in part, to the acquisition of other
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`companies. Additionally, Defendant alleges that Plaintiffs customer claims are misleading in that
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`its customer list includes vendors, engineers, suppliers and other contacts including law firms, and
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`3
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`Case 2:08-cv-02701-MSG Document 70 Filed 12/28/10 Page 4 of 29
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`there is no evidence that the customers were "satisfied." (Defs.' Resp. to PI.'s St. of
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`Facts ~ 2.)
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`B. Zachr American Infrastructure and Zachry Constrction Company
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`The Zachry business began in Texas 80 years ago and presently includes over 30 companies
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`that provide a range of goods and services. According to Defendants, ZCC and ZAI are maintained
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`as distinct entities. Both companies are incorporated in Delaware, with their principal places of
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`business in San Antonio, Texas. ZCC is principally engaged in construction services including
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`industrial construction, heavy
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`civil construction and commercial construction, with annual revenues
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`of approximately $400 milion. In its marketing activities, ZCC does not use the ZAI mark. (Defs.'
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`Br. Summ. 1. 6-7.)
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`According to Defendants, ZAI was established and began using the "Zachry American
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`Infrastructure" mark in 2005. Defendants assert that ZAI has no construction operations, is not a
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`construction company, and that ZAI was not created to provide revenue streams to ZCC, but rather,
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`to enter a new market involving finance. Defendants state, . "ZAI is involved in the financial side
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`of large, privately owned infrastructure projects" in which "ZAI assists with project financing via
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`public-private partnerships (PPP) for road, rail, and utilties, and roadway electronic toll collection
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`services." As of
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`its summary judgment submission, ZIA had only been awarded one contract and
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`had retained ZCC to provide the constrction services for that project. (Defs.' Br. Summ. J. 8.)
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`Defendants further allege that they have not had any development projects in states where
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`Plaintiff operates, and urge that there is no evidence that Plaintiff
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`has lost any business opportnities
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`to, or been in competition with, ZAI. (Defs.' Br. Summ. J. 8.)
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`Plaintiff counters that contrary to Defendants' assertion that ZAI is involved only in the
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`financial side of infrastructure projects, ZAI's offerings include development, design, construction,
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`4
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`

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`Case 2:08-cv-02701-MSG Document 70 Filed 12/28/10 Page 5 of 29
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`ownership, operation and maintenance. (PI.'s Resp. to Defs.' St. of Facts ~ 24.) Therefore,
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`according to Plaintiff, "(aJlthough Zachry American Infrastructure's precise business model differs
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`somewhat from that of
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`Plaintiff,
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`some ofthe services offered to the ultimate customer are identicaL.
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`To wit, both Plaintiff
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`and Defendants are engaged in the construction of
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`road, highway, bridge and
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`water projects for public entities." (Pi"s Br. Summ. J. 6-7) (citing to the ZAI brochure: "ZAI was
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`formed to pursue concession tye infrastructure projects". .. "We provide a full-service package
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`that encompasses the finance, delivery and operation of
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`transportation infrastructure projects.")
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`Plaintiff also points out that Defendants' outside counsel was aware of
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`Plaintiff and its mark
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`prior to the decision to proceed with forming ZAI and beginning to trade under the name "Zachry
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`American Infrastrcture." (PI.' s Br. Summ. J. 6.)
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`Lastly, while Plaintiff agrees that the mark was established in 2005, it argues that Defendants
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`did not begin to use the "Zachry American Infrastructure" service mark and trade name until a later
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`date. (Pi.' s Resp. to Defs.' St. of Facts ~ 30; Pi.' s Br. Summ. 1. 5.)
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`II. STANDARD OF REVIEW
`
`Under Federal Rule of Civil Procedure 56(c), summary judgment is appropriate "if the
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`pleadings, depositions, answers to interrogatories, and admissions on fie, together with the
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`affidavits, if any, show that there is no genuine issue as to any material fact and that the moving part
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`is entitled to summary judgment as a matter oflaw." Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett,
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`477 U.S. 317, 322 (1986). In order
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`to defeat amotion for summary judgment, disputes must be both
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`(1) material, meaning concerning facts that will affect the outcome
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`of the issue under substantive
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`law, and (2) genuine, meaning the evidence must be such that a reasonable jury could return a verdict
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`for the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
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`5
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`

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`Case 2:08-cv-02701-MSG Document 70 Filed 12/28/10 Page 6 of 29
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`A part moving for summary judgment has the initial burden of supporting its motion with
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`evidence that would be admissible in a triaL. Id. Ifthis requirement is satisfied, the burden shifts to
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`the non-moving part to "set out specific facts showing a genuine issue for triaL." Fed. R. Civ. P.
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`56(e)(2). The non-moving part may meet this burden either by submitting evidence that negates
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`an essential element of
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`the moving party's claims, or by demonstrating that the movant's factual
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`evidence is insuffcient to establish an essential element of its claims. Celotex, 477 U.S. at 331.
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`The non-moving part cannot avert summary judgment with speculation or conclusory
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`allegations such as those found in the pleadings, but rather, must present evidence from which a jury
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`could reasonably find in its favor. Ridgewood Bd. ofEdu. v. N.E. for M.E., 172 F.3d 238,252 (3d
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`Cir. 1999). In reviewing a motion for summary judgment, the court "does not make credibility
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`determinations and must view facts and inferences in the light most favorable to the part opposing
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`the motion." Siegel Transfer, Inc. v. Carrier Express, Inc., 54 F.3d 1125, 1127 (3d Cir. 1995).
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`Where cross motions for summary judgment have been filed, as is the case here, the
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`following standards apply:
`
`In cases where the parties fied cross-motions for summary judgment,
`each side essentially contends that no issue of material fact exists
`from its perspective. We must, therefore, consider each motion for
`summary judgment separately. The standards under which we grant
`or deny summary judgment do no change because cross motions are
`fied. Each part stil bears the initial burden of establishing alack of
`genuine issues of material fact. Such contradictory claims do not
`necessarily guarantee that if one party's motion is rejected, the other
`part's motion must be granted.
`
`Wiliams v. Philadelphia Housing Authority, 834 F.Supp. 794, 797 (E.D.Pa. 1993) aff d 27 F.2d 560
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`(3d Cir. 1994) (citations omitted).
`
`6
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`

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`Case 2:08-cv-02701-MSG Document 70 Filed 12/28/10 Page 7 of 29
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`III. APPLICABLE PRECEDENT - TRADEMARK INFRINGEMENT
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`To prevail on its claim oftrademark infringement and unfair competition under the Lanham
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`Act, Plaintiff must establish that (1) its mark is valid and protectable; (2) it owns the mark;5 and (3)
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`defendant's use of
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`the mark to identify goods or services is likely to cause confusion. Checkpoint
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`Systems, Inc. v. Check Point Software Technologies, Inc., 269 F.3d 270, 279 (3d Cir. 2001).6
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`Where a mark is federally registered and has become incontestable, validity, protectability and
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`ownership are proven. Ford Motor Co. v. Summit Motor Prods., Inc., 930 F.2d 277, 291 (3d Cir.
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`1991) (citing Opticians Ass'n. of America v. Independent Opticians of America, 920 F.2d 187, 192
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`(3d Cir. 1990)). Here, Plaintiftsmark is not federally registered, therefore the primary issue before
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`the Court is whether Plaintiff has established that "American Infrastructure" is a valid, legally
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`protectable trademark.
`
`In order to determine validity and protectablility, a court must examine and then place the
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`mark into one of the following four categories: arbitrary or fanciful, suggestive, descriptive, or
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`5 "With respect to ownership of an unregistered mark, the first party to adopt a mark can
`assert ownership to it as long as it continuously uses the mark in its commerce." Ford Motor
`Co., 930 F.2d at 292 (citing Tally-Ho, Inc. v. Cast Community College District, 889 F.2d 1018,
`1022-23 (11 th Cir. 1989)). Plaintiff argues that "(h Javing been the first to adopt and use the
`AMERICAN INFRASTRUCTURE mark and to use it continuously thereafter, it cannot be
`the mark." (PI.'s Br. Summ. J. 15.) Defendants do not argue
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`disputed that Plaintiff
`
`is owner of
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`this point.
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`6 "The Third Circuit test for common law infringement and unfair competition is identical
`to the test for federal infringement and unfair competition." World Wrestling Fed'n
`Entertainment, Inc. v. Big Dog Holdings, Inc., 280 F.Supp. 2d 413, 446 (W.D.Pa. 2003)
`(citations omitted); see also Haymond v. Lundy, 2000 WL 804432, at *12 (E.D.Pa. June 22,
`2000) (citing Guardian Life Insur. Co. of America v. American Guardian Life Assur. Co., 943
`F.Supp. 509, 525 (E.D.Pa. 1996) ("The elements of a cause of action forunfair competition
`under Pennsylvania common law 'are identical to those for a claim under. . . the Lanham Act,
`with the exception that the goods need not have traveled in interstate commerce. . . . "')).
`
`7
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`

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`Case 2:08-cv-02701-MSG Document 70 Filed 12/28/10 Page 8 of 29
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`generic. E.T. Browne Drug Co. v. Cococare Products, Inc., 538 F.3d 185,191 (3d. Cir. 2008).
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`"Arbitrary or fanciful marks use terms that neither describe nor suggest anything about the
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`product, they bear no logical or suggestive relation to the actual characteristics of
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`the goods." A&H
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`Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198,221 (3d Cir. 2000) (citing AJ.
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`Canfiéld Co., 808 F.2d 291, 296 (3d Cir. 1986)). Examples of arbitrary marks include "Camel"
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`cigarettes, "Rainbow" bread and "Apple" computers. Examples offanciful marks include "Google"
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`search engine and "Xerox" photocopy equipment. 2 J. Thomas McCarthy, McCarthy on
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`Trademarks
`
`& Unfair Competition § § 11: 8, 11: 13 (4th ed. vol. 2, 2010) (hereinafter McCarthy).
`
`Suggestive marks "require consumer' imagination, thought or perception' to determine what
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`the product is." A&H Sportswear, 237 F.3d at 221 (citing AJ. Canfield, 808 F.2d at 297). Examples
`
`of suggestive marks include "Sheer Elegance" pantyhose, "Bear" parkas, jackets and boots, and
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`"Coppertone" suntan oiL. McCarthy § 11.72.
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`Descriptive marks convey "an immediate idea of the ingredients, qualities or characteristics
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`of the goods," A&H Sportswear, 237 F.3d at 221 (citing AJ. Canfield, 808 F.2d at 297), thereby
`
`"directly giv(ingJ some reasonably accurate or tolerably distinct knowledge of
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`the characteristics of
`
`a product (or serviceJ." AcademyOne, Inc. v. CollegeSource, Inc., 2009 WL 5184491, * 8 (E.D.Pa.
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`Dec. 21, 2009)( quoting McCarthy § 11: 19). Examples of descriptive marks include "After Tan" after
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`sunning lotion and "Vision Center" optical center. McCarthy § 11.24.
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`Generic marks function as the "common descriptive name of the product class." AJ.
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`Canfield, 808 F.2d at 296. "Cola" is a generic mark. E.T. Browne, 538 F.3d at 192.
`
`8
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`

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`Case 2:08-cv-02701-MSG Document 70 Filed 12/28/10 Page 9 of 29
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`Arbitrary, fanciful or suggestive marks are always protected under the Lanham Act.7
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`Descriptive marks are afforded protection only if
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`they have acquired secondary meaning associating
`
`the mark with the claimant. McCarthy § 11.24. Secondary meaning exists when a trademark "is
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`interpreted by the concerning public to be not only an identification of the product or services, but
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`also a representation of
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`the origin of
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`those products or services." Commerce Nan. Ins. Servs., Inc.
`
`v. Commerce Ins. Agency, Inc., 214 F.3d 432,438 (3d Cir. 2000) (citing Scott Paper Co. v. Scott's
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`Liquid Gold, Inc., 589 F.2d 1225, 1231 (3d Cir. 1978)).
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`Lastly, the Lanham Act provides no protection for generic marks or terms "because a first-
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`user of a term 'cannot deprive competing manufactuers of
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`the product of
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`the right to call an article
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`by
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`its name.'" E.T. Browne Drug Co., 538 F.3d at 191 (3d Cir. 2008), (citingAJ. Canfield, 808 F.2d
`
`at 297). Indeed, generic marks "are not trademarks at alL." A&H Sportswear, 237 F.3d at 221.
`
`iv. ANALYSIS
`
`Plaintiff
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`urges that its mark is valid and protectable because it is suggestive. Alternatively,
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`Plaintiff asserts the mark is descriptive and has acquired a secondary meaning. Plaintiff further
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`stresses that ZAI is entering its region with the intention of competing for the same contracts, using
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`a confusingly similar mark, which is likely to cause "reverse confusion" in violation of
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`the Lanham
`
`Act.
`
`Defendants argue that they too
`
`are entitled to summary judgment and contend in the first
`
`instance that the mark is not suggestive. Defendants state that although the "American Infrastructure"
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`7 Arbitrary, fanciful or suggestive marks are commonly referred to as "inherently
`distinctive." Ford Motor, 930 F.2d at 292 n. 18.
`
`9
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`

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`Case 2:08-cv-02701-MSG Document 70 Filed 12/28/10 Page 10 of 29
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`mark may be descriptive, Plaintiff has failed to point to suffcient facts establishing secondary
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`meaning. Defendants further argue that Plaintiff has not shown that the "Zachry American
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`Infrastrcture" mark is likely to cause consumer confusion.
`
`A. Is the Mark Suggestive?
`
`Plaintiff
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`first asserts that the "American Infrastrcture" mark is suggestive and thus inherently
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`distinctive. In support, Plaintiff posits two arguments. First, Plaintiff relies on an attempted
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`registration of
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`several ofPlaintifts marks with the Patent and Trademark Offce (PTO).8 Plaintiff
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`cites to thePTO's approval of three American Infrastructure applications for publication on the
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`principal register in April of2009. Plaintiff
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`notes that the approvals did not require disclaimers,9 nor
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`did they indicate that they were approved on a 2(t) basis pursuant to the Lanham Act, 15 U.S.C.
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`principal register on account of
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`misdescriptive of
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`them. . ." 15 U.S.C. § 1052(e)(1). However, Section 2(t) of
`
`8 A part seeking to register its mark with the PTO must submit an application, which is
`reviewed by a PTO examiner. If the examiner determines that the mark is inherently distinctive
`(e.g., suggestive), it is "published" on the principal register. A mark that is found to be
`descriptive is generally barred from publication on the principal register pursuant to Section
`2( e)(1) ofthe Lanham Act. Section 2( e)(1), provides that "No trademark by which the goods of
`the applicant may be distinguished from the goods of others shall be refused registration on the
`its nature unless it - Consists of a mark which (1) when used on
`or in connection with the goods of the applicant is merely descriptive or deceptively
`the Lanham Act
`allows for publication on the principal register if the applicant can prove that the descriptive
`mark has acquired distinctiveness, or secondary meaning. Cold War Museum, Inc. v. Cold War
`Air Museum, Inc., 586 F.3d 1358 (Fed.Cir. 2009). Section 2(t) provides that "nothing. . . shall
`prevent the registration of a mark used by the applicant that has