Trademark Trial and Appeal Board Electronic Filing System. httg://estta.us_Q(o. gov
`ESTTA Tracking number:
`ESTTA393228
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`Filing date:
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`02/14/2011
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`99992929
`Plaintiff
`Zachry American Infrastructure, Inc.
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`JANET F SATTERTHWAITE
`VENABLE LLP
`en575 7TH STREET NW
`WASHINGTON, DC 20004
`UNITED STATES
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`TrademarkTdocket@venab|e.com,jfsatterthwaite@venabIe.com,pjwy|es@venab|
`e.com
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`Other Motions/Papers
`Janet F. Satterthwaite
`jfsatter1hwaite@venab|e.com,
`pjwy|es@venab|e.com,trademarkdocket@venabIe.com
`/Janet F. Satterthwaitei
`02/14/2011
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`I
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`73470-281318 MOT|ON.pdf( 7 pages )(366305 bytes )
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`Party
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`Correspondence
`Address
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`Fi|er's e-mail
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`MOTION EX A.pdf( 32 pages )(1723333 bytes )
`MOTION EX B.pdf ( 28 pages )(1852352 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Consolidated Opposition Nos.
`91192029 (parent)
`91 192030
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`91 19203 1
`91 196513
`91 196514
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`Zachry American Infrastmcture, LLC,
`Opposer,
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`v.
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`American Infrastructure, Inc.,
`Applicant
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`Attorney Ref.: 73470- 281318
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`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 2.1 17(a), and TBMP Section 510.02, for resumption of all proceedings and entry
`of final judgment in all proceedings in favor ofOpposer consistent with the fully litigated, final
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`determination of the civil action between the partiesin the United States District Court for the
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`Eastern District of Pennsylvania in American Infrastructure v. Zachry Construction Corp. and
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`Zachry American Infrastructure, Inc.,
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`in which the District Court ruled on summary 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 secondary meaning, thus finding that Applicant had no
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`trademark rights in the term AMERICAN INFRASTRUCTURE. A copy of the Court's opinion is
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`attached as Exhibit A hereto.‘ Applicant's time to appeal the Court's final ruling expired on January
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`27, 2011, and no appeal was taken; therefore, the judgment of the District Court is final.
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`The Notices of Opposition alleged that the term AMERICAN INFRASTRUCTURE is
`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:
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`Business information management in the
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`field ofheavy civil construction,‘ supply servicesfor third parties in the field ofconstruction
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`materials, namely, purchase ofaggregate, 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 ofstone-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 ofwater and
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`wastewater plants; construction ofwater and wastewater plants; laying and construction of
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`I 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 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 particular, 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 of TTAB Dated November 23, 2009, in consolidated Oppositions Nos. 91192029, 30 and
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`131.
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`The ruling of the District Court found that applicant had no inherent or acquired
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`distinctiveness in the term 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 Court case, Applicant accused Opposer of infringement based on Opposer's
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`use of the term "Americ'an,Infrastructure" as part of its trading name ZACHRY AMERICAN
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`INFRASTRUCTURE. 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 Infrastructure Inc. is now an LLC and the LLC is the party
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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 further
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`I noted in the Complaint that it uses its AMERICAN INFRASTRUCTURE mark in connection with
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`"numerous construction services including: construction consultation, construction management;
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`construction plarming, 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 1 1, 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 the services offered by Applicant.
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`The parties filed, fully briefed, and argued cross-motions for summary judgment. On I
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`December 28, 2010, The District Court 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
`descriptive, and that Applicant has failed to prove secondary meaning even to the level ofrising to a
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`genuine issue of material fact for trial.
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`First, the Court found that the term AMERICAN INFRASTRUCTURE is not suggestive,
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`but is-merely 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 planning, and construction of water, wastewater plants,
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`pipelines, roads, highways and bridges." Id. The Court 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 TTAB cases.
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`-3-
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`Id. at 12. The Court then ruled that Applicant has not established secondary meaning either. Op. at
`13-27. The Court went through fifteen pages ofanalysis of Applicant's evidence of alleged
`I
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`secondary meaning. 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 Court note that not only is the Trademark Office's determination under
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`Section 2(f) not binding on the court, but the Board noted that in an inter partes proceeding, its
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`ruling might be different in this case, and Court quoted the Board on_this point:
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`"on this record [referring only to a declaration of distinctiveness with no evidence in support], we
`are satisfied that applicant has made substantially exclusive use of the wording 'AMERICAN
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`INFRASTRUCTURE‘ so that it had acquired distinctiveness under Section 2(f)" but the Board also
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`noted that "in an inter partes proceeding involving a different record, our ruling might be different."
`Op. at 28, citing/quoting opinion ofTTAB, July 21 2t)10.
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`_
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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 plarming, and construction of water, wastewater plants, pipelines, roads,
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`highways and bridges." Op. at 3. There is no doubt, however, that the Court'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 these consolidated oppositions. The court noted that while arguably some of Applicant
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`services, such as quarry services, might not "traditionally be deemed 'infrastructure'...we are
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`satisfied that as a whole, the mark, American Infiastructure, fairly describes Plaintifls services.
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`We therefore reject Plaintiffs argument that "American Infrastructure" is suggestive." Op at 1 1-12.
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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 Court. The Amended complaint asserted rights in "numerous construction services
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`including: construction consultation, construction management; construction planning, building
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`construction for residential, commercial, and institutional use; consultation services for the
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`constructions of water and wastewater plants; constructions of pipelines; construction of 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 Court, in granting summary judgment, found
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`that Applicant had not established any rights to the term AMERICAN INFRASTRUCTURE under
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`inherent or acquired distinctiveness with respect to any of its goods or services.‘ The Court did not
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`carve out any of these services. As such all the issues were before the Court, and it is thus clear that
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`thepCourt 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 the consolidated oppositions. The Court'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 summary, the District Court noted that
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`in order to prevail on its claim of trademark infringement and unfair competition under the
`Lanham Act, Plaintiff [applicant] must establish that (1) its mark is valid and protectable; (2)
`it owns the mark; and (3) defendant's use of the mark to identify goods and services is likely
`to cause C01'lfl.1Sl0l'l. ...Having considered both motions for summary judgment, because we
`find that Plaintiff has not pointed to evidence of secondary meaning, it cannot establish
`validity ofthe mark. Thus, we need not undertake any further analysis. Defendant is entitled
`to summary judgment.
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`9 Op at 29 (emphasis added.)
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`Both the Court and the Board in these proceeding have already stated that the Court's
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`findings of law and fact are binding on the Board, but that the Board carmot bind the Court. .2
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`2 See Op. at 28; see also Order of 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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`V
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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 the application approved under Section 2(f), have not
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`acquired secondary meaning 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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`Respectfully submitted,
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`331
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`By: _______~..______
`William D. Coston
`Mark B. Harrison
`Janet F. Satterthwaite
`Venable LLP
`575 7"‘ St NW
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`Washington DC 20004
`202-344-4000
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`jfsatterthwaite@venable.com,
`trademarkdocket@venable.com
`Attorneys for Opposer
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`Dated: February 14, 2010
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`D02/l/1157379
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`Bakeries Co. v. Pan-0-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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`4 CERTIFICATE OF SERVICE
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`I, hereby certify that on the 14"‘ day of February, 2011, a true copy of 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
`‘ 9"‘ Floor
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`One Logan Square
`Philadelphia PA 19103
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`Janet F. Satterthwaite
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`Dc2/1/1157379
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` EXHIBIT A
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`Case 2:08-cv-02701-MSG Document 70
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`Filed 12/28/10 Page 1 of 29
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE EASTERN DISTRICT OF PENNSYLVANIA
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` : CIVIL ACTION
`INFRASTRUCTURE,
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`Plaintiff,
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`v.
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`NO. 08-2701
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`ZACIIRY CONSTRUCTION
`- CORP., et. al.,
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`'
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`Defendants.
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`Goldberg, J.
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`December 2a, 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.‘
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`Plaintiff’ s complaint alleges
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`trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1125, et seq.,’ and unfair
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`‘competition under Pennsylvania common law. ‘Before the Court are Plaintiff’s and Defendants’
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`‘ In its motion for summary judgment, Plaintiff sought equitable relief, in the form of an
`injunction and an accounting ofDefendants’ profits, as well as actual damages. (Pl.’s First Am.
`Compl. 10-1 1.) However, at oral argument, Plaintiff’s 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. Ԥ l125(a) and (2) infringement of a
`- common law mark under the Lanham Act, 15 U.S.C. § l125(a). (First Amended Complaint.) _
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`1
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`Case 2:08-cv-02701-MSG Document 70
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`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 will be
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`denied and Defendants’ motion will be granted.
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`'1.
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`BACKGROUND
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`Unless specified, the following facts are undisputed.
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`A.
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`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.”
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`In 1908, 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 Facts 111] 1, 6, 7, 13.)’
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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. Griffith.” In 2003, Plaintiff renamed its Maryland
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`business “American Infrastructure - Maryland” and in42007 renamed its Virginia business “American I
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`Infrastructure — Virginia.” (Defs.’ St. of Facts 111] 7, 9-11.)
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`I
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`Today, after the above acquisitions and name changes, Plaintiff is made up of four business
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`units: Allan A. Myers; American Infrastructure - Maryland; American Infrastructure - Virginia; and
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`Independence Construction Materials,‘ all of which conduct business in the Mid-Atlantic region,
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`' which includes Pennsylvania, New Jersey, Delaware, Maryland, and Virginia. (Pl.’s Br. Summ. J.
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`3 Defendants’ Statement of Undisputed Facts will be cited to as “Defs.’ ‘St. of Facts” and
`Plaintiff’ s Statement of Undisputed Facts as “Pl.’s St. of Facts.”
`I
`F
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`“ This entity originated in 1998 when Plaintiff consolidated its materials divisions. (Pl.’s
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`Opp. to Defs.’ Br. Summ. J. Ex. Q, AI 000220.)
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`2
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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 Facts 11 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,
`highways and bridges. (Pl.’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 Infrastructure” plus its icon;
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`(2) “Allan A. Myers, a company of American Infrastructure” and the icon; and (3) “R.G. Griffith,
`a Company ofAmerican Infrastructure” and the icon. (Pl.’s Br. Summ. J. 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
`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 planning. (Defs.’ Resp. to Pl.’s St. of Facts 111] 1, 10.)
`According to Plaintiffs, between 1998 (when the mark was adopted), and 2008, its annual
`revenuesugrew from $142 million 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
`25” largest heavy civil contractor inthe country and the 1 1"‘ largest contractor in the Mid—Atlantic.
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`(Pl.’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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`Case 2:08-cv-02701-MSG Document 70
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`Filed 12/28/10 Page 4 of 29
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`there is no evidence that the customers were “satisfied.” (Defs.’ Resp. to P1.’s St. of Facts 1[ 2.)
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`B.
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`Zacl_i_ry American Infrastructure and Zachry Construction 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 ofgoods 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, heavycivil construction and commercial construction, with annual revenues
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`of approximately $400 million. In its marketing activities, ZCC does not use the ZAI mark. (Defs.’
`Br. Summ. J. 6-7.)
`A
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`According to Defendants, ZAI was established and began using the “Zachry American
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`Infrastmcture” 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, A “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 utilities, and roadway electronic toll collection
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`services.” As of its summary judgment submission, ZIA had only been awarded one contract and
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`had retained ZCC to provide the construction 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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`Plaintiffoperates, and urge that there is no evidence that Plaintiffhas lost any business opportunities
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`to, or been in competition with, ZAI.
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`(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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`Case 2:08-cv-O2701—MSG Document 70
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`Filed 12/28/10 Page 5 of 29
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`ownership, operation and maintenance.
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`(Pl.’s Resp. to Defs.’ St. of Facts 1] 24.) Therefore,
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`according to Plaintiff, “[a]1though Zachry American Infrastructure’s precise business model differs
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`somewhat from that of Plaintiff,'some of the services offered to the ultimate customer are identical.
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`To wit, both Plaintiff and Defendants are engaged in the construction of road, highway, bridge and
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`water projects for public entities.” (Pl.’s Br. Summ. J. 6-7) (citing to the ZAI brochure: “ZAI was
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`formed to pursue concession type infrastructure projects” .
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`.
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`. “We provide a full-service package
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`that encompasses the finance, delivery and operation of transportation infrastructure projects”)
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`Plaintiffalso points out that Defendants’ outside counsel was aware ofPlaintiffand 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 Infrastructure.” (Pl.’sVBr. Summ. J. 6.)
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`4
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`Lastly, while Plaintiffagrees 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. (Pl.’s Resp. to Defs.’ St. of Facts 1] 30; P1.’s Br. Summ. J. 5.)
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`II.
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`STANDARD OF REVIEW
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`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 file, 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 party
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`is entitled to summaryjudgment as a matter oflaw.” Fed. R. Civ. P. 56(0); Celotex Com. v. Catrett,
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`477 U.S. 317, 322 (1986). In order to defeat a motion for summaryjudgment, disputes must be both
`(1) material, meaning concerning facts that will affect the outcome -ofthe issue under substantive
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`law, and (2) genuine, meaning the evidence must be such that a reasonablejury could return a verdict
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`for the non-moving party. Anderson v. Liber_'__ty Lobby, 1nc., 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
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`Filed 12/28/10 Page 6 of 29
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`A party 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. E. If this requirement is satisfied, the burden shifts to
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`the non-moving party 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 party may meet this burden either by submitting evidence that negates
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`an essential element of the moving party’s claims, or by demonstrating that the movant’s factual
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`. evidence is insufficient to establish an essential element of its claims. Celotex, 477 U.S. at 331.
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`The non-moving party 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 ajury
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`could reasonably find in its favor. Ridgewood Bd. of Edu. v. N.E. for M.E., 172 F.3d 238, 252 (3d
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`Cir. 1999).
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`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 party 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:
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`In cases where the parties filed 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
`filed. Each party still bears the initial burden of establishing a.lack of
`genuine issues of material fact. Such contradictory claims do not
`necessarily guarantee that if one party's motion is rejected, the other
`party's motion must be granted.
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`Williams v. Philadelphia Housing Authority, 894 F.Supp. 794, 797 (E.D.Pa. 1993) aft’d 27 F.2d 560
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`(3d Cir. 1994) (citations omitted)’.
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`Case 2:08-cv-02701-MSG Document 70
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`Filed 12/28/10 Page 7 of 29
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`III.
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`APPLICABLE PRECEDENT — TRADEMARK INFRINGEMENT
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`0 To prevail on its claim oftrademark infringement and unfair competition under the Lanham
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`Act, Plaintiffmust establish that (11) its mark is valid and protectable; (2) it owns the mark;5 and (3)
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`defendant’s use of 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).“
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`Where amark 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, Plaintiffsvmark 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.
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`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
`_Qg,, 930 F.2d at 292 (citing Tally-Ho, Inc. v. Cast Community College District, 889 F.2d 1018,
`1022-23 (1 1"‘ Cir. 1989)). Plaintiff argues that ‘_‘[h]aving been the first to adopt and use the
`AMERICAN INFRASTRUCTURE mark and to use it continuously thereafter, it cannot be
`disputed that Plaintiff is owner of the mark.” (Pl.’s Br. Summ. J. 15.) Defendants do not argue
`this point.
`.
`
`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); s_e_e _als_o_ H florid v. Lundy, 2000 WL 804432, at *l2 (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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`Case 2:08-cv—02701-MSG Document 70
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`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).
`
`“Arbitrary or fanciful marks use terms that neither describe nor suggest anything about the
`
`product, they bear no logical or suggestive relation to the actual characteristics of the goods.” A_8L_PI_
`
`Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 221 (3d Cir. 2000)i(citing Ag;
`
`Canfield Co., 808 F.2d 291, 296 (3d Cir. 1986)). Examples of arbitrary marks include “Camel”
`cigarettes, “Rainbow” bread and “Apple” computers. Examples offanciful marks include “Google”
`
`search engine and “Xerox” photocopy equipment. 2 J. Thomas McCarthy, McCarthy on‘ Trademarks
`
`& Unfair Competition §§ 11:8, 1 1:13 (4"‘ ed. vol. 2, 2010) (hereinafter McCarthy).
`
`Suggestive marks “require consumer ‘imagination, thought or perception’ to determine what
`
`the product is.” A&H Sportswea , 237 F .3d at 221 (citing A.J. Canfield, 808 F.2d at 297). Examples
`
`of suggestive marks include “Sheer Elegance” pantyhose, “Bear” parkas, jackets and boots, and
`
`“Coppertone” suntan oil. McCarthy § 11.72.
`
`Descriptive marks convey “an immediate idea of the ingredients, qualities or characteristics
`
`
`of the goods,” A&H Sportswear, 237 F.3d at 221 (citing A.J. Canfield 808 F.2d at 297), thereby
`
`“directly giv[ing] some reasonably accurate or tolerably distinct knowledge of the characteristics of
`
`a product [or service].” Academflne, Inc. V. Collegesource, Inc.-, 2009 WL 5184491, * 8 (E.D.Pa.
`
`Dec. 21, 2009)(quoting McCarthy § 1 1219). Examples ofdescriptive marks include “After Tan” after
`
`sunning lotion and “Vision Center” optical center. McCarthy § 11.24.
`
`Generic marks function as the “common descriptive name of the product class.” A.J.
`
`Canfield, 808 F.2d at 296. “-Cola” is a generic mark. E.T. Browne, 538 F.3d at 192.
`
`

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`Case 2:08-cv-O2701—MSG Document 70
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`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
`
`Descriptive marks are afforded protection only if they have acquired secondary meaning associating
`
`the mark with the claimant. McCarthy §11.24. Secondary meaning exists when a trademark “is
`
`interpreted by the concerning public to be not only an identification of the product or services, but
`
`
`. also a representation of the origin of those products or services.” Commerce Nat’l. Ins. Servs. Inc.
`
`v. Commerce Ins. Agency, Inc., 214 F.3d 432, 438 (3d Cir. 2000) (citing Scott Paper Co. v. Scott’s
`
`Liguid Gold, Inc., 589 F.2d 1225, 1231 (3d Cir. 1978)).
`
`Lastly, the Lanham Act provides no protection for generic marks or terms “because a first-
`
`user of a term ‘cannot deprive competing manufacturers of the product of the right to call an article
`
`by its name.”’ E.T. Browne Drug Co., 538 F.3d at 191 (3d Cir. 2008), (citing AJ. Canf1eld,808 F.2d
`
`. at 297). Indeed, generic marks “are not trademarks at all.” A&H Sportswear, 237 F.3d at 221.
`
`IV.
`
`ANALYSIS
`
`Plaintiff urges that its mark is valid and protectable because it is suggestive. Alternatively,
`
`Plaintiff asserts the mark is descriptive and has acquired a secondary meaning. Plaintiff further
`
`stresses that ZAI is entering its region with the intention of competing for the same contracts, using
`
`a confusingly similar mark, which is likely to cause “reverse confiision” in violation of 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”
`
`7Arbitrary, 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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`Case 2:08-cv-02701-MSG Document 70
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`mark may be descriptive, Plaintiff has failed to point to sufficient facts establishing secondary
`
`meaning. Defendants further argue that Plaintiff has not shown that the “Zachry American
`
`Infrastructure” mark is likely to cause consumer confiasion.
`
`A.
`
`Is the ‘Mark Suggestive?
`
`Plaintifffirst asserts that the “American Infrastructure” mark is suggestive and thus inherently
`
`distinctive.
`
`In support, Plaintiff posits two arguments. First, Plaintiff relies on an attempted
`
`registration of several of Plaintiffs marks with the Patent and Trademark Office (PTO).8 Plaintiff
`
`_ cites to the 'PTO’s approval of three American Infrastructure applications for publication on the
`
`principal register in April of 2009. Plaintiff notes that the approvals did not require disclaimersf’ nor
`
`did they indicate that they were approved on a 2(f) basis pursuant to the Lanham Act, 15 U.S.C.
`
`8 A party seeking to register its mark with the PTO mus_t 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)(l) of the Lanham Act. Section 2(e)(l), 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
`principal register on account of its natureunless it — Consists of a mark which (1) when used on
`or in connection with the goods of the applicant is merely descriptive or deceptively
`misdescriptive of them. . .” 15 U.S.C. § 1052(e)(l). -However, Section 2(f) of 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(f) prov