01-1016 Packman v. Chicago Tribune Co., et al.

Listen to this article

“On June 15, 1998, in recognition of the Chicago Bulls’ sixth National Basketball Association (‘NBA’) championship, the headline of the front page of the Chicago Tribune read ‘The joy of six.’ As it has done on several other historic occasions, the Chicago Tribune Company reproduced its entire front page on t-shirts, posters, plaques and other memorabilia…

Diana Packman holds federal and Illinois trademarks for the phrase ‘the joy of six,’ for use in relation to football and basketball games.”

“[T]he record lacks any evidence that ‘the joy of six’ had acquired a secondary meaning as used by Ms. Packman, and she does not point to any evidence in rebuttal. Secondary meaning is ‘a mental association in buyers’ minds between the alleged mark and a single source of the product.’ 2 J. Thomas McCarthy, Trademarks and Unfair Competition sec. 15:5, at 15-9 (4th ed. 2001). … A mark acquires secondary meaning when it has been used so long and so exclusively by one company in association with its goods or services that the word or phrase has come to mean that those goods or services are the company’s trademark. Id. sec. 15:5, at 15-10; see Platinum Home Mortgage, 149 F.3d at 728.

Proof of secondary meaning can be established through direct consumer testimony, consumer surveys, length and manner of use, amount and manner of advertising, volume of sales, place in the market, and evidence of intentional copying… Ms. Packman’s assertion of secondary meaning is purely speculative. She does not tell us how many shirts or hats the Ohio store or the Chicago street vendor sold, how many items she produced, who purchased them, or whether she advertised her products. See Platinum Home Mortgage, 149 F.3d at 729 (rejecting plaintiff’s circumstantial evidence of advertising and sales). Thus, the record confirms the absence of a secondary meaning altogether. Ms. Packman used the mark primarily in connection with small group outings to sporting events, did not commercially advertise her outings or her products, and used the phrase in connection with the Bulls for less than three years. See id., 149 F.3d at 728 (plaintiff who used mark for only three years could not demonstrate that mark had secondary meaning). The phrase ‘the joy of six’ did not achieve a level of distinctiveness with respect to Ms. Packman’s goods or services, nor does it exclusively relate to the Bulls’ sixth championship. See Spraying Sys., 975 F.2d at 393 (evidence of third-party use of mark cast further doubt on plaintiff’s assertion of secondary meaning).

Accordingly, the record supports only one conclusion, that “the joy of six” is merely a descriptive phrase without a secondary meaning, a phrase which defendants, or any other person, may rightfully use. See Blau Plumbing, 781 F.2d at 610 (descriptive mark without secondary meaning was unworthy of trademark protection).”

Affirmed.

Appeal from the United States District Court for the Northern District of Illinois, Kocoras, J., Ripple, J.