Filipino Yellow Pages, Inc. v. Asian Journal Pubs, Inc.

O'SCANNLAIN, Circuit Judge.

I

Roger Lagmay Oriel and Oscar Jornacion were partners in four businesses between 1982 and 1986. One of these businesses, Fil-Am Enterprises, Inc. ("Fil-Am"), published the Filipino Directory of California, a telephone directory directed primarily at the Filipino-American community of Southern California. In December 1986, Oriel and Jornacion terminated their business relationship and divided up their business interests through execution of a "Shareholders' Buy Out Agreement" ("the Agreement"). Under the Agreement, Oriel acquired complete ownership of Fil-Am's telephone directory business, and Jornacion agreed not to compete "in the Filipino Directory (Filipino Yellow Pages) [market] in California" for three years.

Oriel, as owner of Fil-Am, continued to publish the Filipino Directory of California until 1991. Between 1991 and 1993, Fil-Am joined two partners to publish a telephone directory known as the Filipino Directory of the U.S.A. and Canada. In 1993, Fil-Am sold its interest in the Filipino Directory of the U.S.A. and Canada. Oriel and his wife, Cora Macabagdal Oriel, then formed a new corporate entity, Asian Journal Publications, Inc. ("AJP"). Since 1994, AJP has published a telephone directory called the Filipino Consumer Directory.

Pursuant to the Agreement's non-compete provision, Jornacion did not participate in the Filipino-American telephone directory market between December 1986 and December 1989. Jornacion reentered the market in 1990 by forming the Filipino Yellow Pages, Inc. ("FYP"), publisher of a directory called the Filipino Yellow Pages. FYP's Filipino Yellow Pages, AJP's Filipino Consumer Directory, and the Filipino Directory of the U.S.A. and Canada currently compete in the Filipino-American telephone directory market in California. A directory unaffiliated with FYP's directory, also called the Filipino Yellow Pages, is marketed to the Filipino-American community in the eastern United States by Kayumanggi Communications, Inc.

. . .

In June 1996, two months before it sued AJP for trademark infringement, FYP applied for registration of "Filipino Yellow Pages" with the Patent and Trademark Office ("PTO"). In December 1996, the PTO refused registration of "Filipino Yellow Pages." The PTO stated: "The proposed mark merely describes the goods and the nature and intended audience for the goods. Accordingly, the mark cannot be registered on the Principal Register based solely on an intent to use the mark in Interstate Commerce." . . .

On August 2, 1996, FYP filed a complaint against AJP, Oriel, and Macabagdal-Oriel (collectively, "AJP") in the Central District of California. FYP alleged the following causes of action: (1) trademark infringement; (2) false designation of origin and false description of sponsorship or affiliation; (3) unfair competition and misappropriation of goodwill, reputation, and business properties; (4) misappropriation of FYP's right of publicity; (5) injury to business relationships; (6) unfair competition under California state law; and (7) trademark dilution under California state law.

AJP moved for summary judgment, arguing that the term "Filipino Yellow Pages" is generic and as such incapable of trademark protection. . . .

In opposing the motion for summary judgment, FYP contended that "Filipino Yellow Pages," rather than being generic, is protectible under trademark law as a descriptive mark with a secondary meaning in the minds of consumers (i.e., as specifically referring to FYP's telephone directory). . . .

On November 26, 1997, the district court granted AJP's motion for summary judgment. The district court held that (1) the term "Filipino Yellow Pages" is generic, and as such incapable of serving as a trademark; and (2) even if the term were descriptive, AJP would still be entitled to summary judgment because FYP had failed to produce any admissible evidence of secondary meaning. On January 16, 1998, the district court entered a judgment in which it dismissed FYP's trademark claims with prejudice and dismissed FYP's other claims without prejudice, subject to refiling in state court. . .


II

A

Before proceeding to the merits, a word on the burden of persuasion is appropriate. In cases involving properly registered marks, a presumption of validity places the burden of proving genericness upon the defendant. . . . If a supposedly valid mark is not federally registered, however, the plaintiff has the burden of proving nongenericness once the defendant asserts genericness as a defense. . . . The case at bar involves a claimed mark that is unregistered; FYP has not yet been successful in its attempts to register "Filipino Yellow Pages" with the PTO. Thus FYP, as trademark plaintiff, bears the burden of showing that "Filipino Yellow Pages" is not generic.

B
. . .

In determining whether a term is generic, we have often relied upon the "who-are-you/what-are-you" test: "A mark answers the buyer's questions 'Who are you?' 'Where do you come from?' 'Who vouches for you?' But the [generic] name of the product answers the question 'What are you?'" . . . Under this test, "if the primary significance of the trademark is to describe the type of product rather than the producer, the trademark [is] a generic term and [cannot be] a valid trademark."

Here the parties do not dispute that "Filipino" and "yellow pages" are generic terms. The word "Filipino" is a clearly generic term used to refer to "a native of the Philippine islands" or "a citizen of the Republic of the Philippines." The term "yellow pages" has been found to be a generic term for "a local business telephone directory alphabetized by product or service." . . . The district court further noted, as shown by FYP's application for trademark registration, that the PTO requires the use of a disclaimer regarding rights to the term "yellow pages" whenever it is used as part of a registered trademark.

The issue then becomes whether combining the generic terms "Filipino" and "yellow pages" to form the composite term "Filipino Yellow Pages" creates a generic or a descriptive term. AJP argues, and the district court concluded, that "Filipino Yellow Pages" is generic based on this court's analysis in Surgicenters of America, Inc. v. Medical Dental Surgeries Co.. In Surgicenters, we held that the term "surgicenter" was generic and that the plaintiff's registered service mark had to be removed from the trademark register. In our discussion in Surgicenters, we summarized (but did not explicitly adopt) the analysis of the district court in that case, which reasoned that "surgicenter," created by combining the generic terms "surgery" and "center," retained the generic quality of its components. We distinguished "surgicenter" from the composite term "Startgrolay," upheld as a valid mark for poultry feed, by noting that the combination of terms in "surgicenter" did not constitute a "deviation from normal usage" or an "unusual unitary combination." Nowhere in Surgicenters did we hold, however, that a composite term made up of generic components is automatically generic unless the combination constitutes a "deviation from normal usage" or an "unusual unitary combination."

In reaching our conclusion of genericness in Surgicenters, we placed significant but not controlling weight on the dictionary definitions and generic nature of "surgery" and "center." We explained that "while not determinative, dictionary definitions are relevant and often persuasive in determining how a term is understood by the consuming public, the ultimate test of whether a trademark is generic." But we also based our genericness finding upon detailed information in some 45 exhibits that, taken collectively, suggested that the consuming public considered the composite term "surgicenter" to mean a surgical center generally speaking, as opposed to a surgical center maintained and operated by the plaintiff specifically. These exhibits included letters from potential consumers and several publications that used the term "surgicenter" in a clearly generic sense. The finding of genericness in Surgicenters cannot be separated from the uniquely well-developed record in that case. . . .

In this case, the district court cited Surgicenters for the proposition that "a combination of two generic words is also generic, unless the combination is a 'deviation from natural usage' or an 'unusual unitary combination.'" The court then stated that "under this analysis, the term 'Filipino Yellow Pages' seems to be neither a 'deviation from natural usage,' nor an 'unusual unitary combination.'" The district court's reading of Surgicenters appears somewhat troubling insofar as it oversimplifies our opinion. First, it overlooks our explicit recognition that "words which could not individually become a trademark may become one when taken together." . . . Second, it effectively makes dictionary definitions the crucial factor in assessing genericness, even though Surgicenters makes clear that such definitions are "not determinative" and that the "ultimate test" of genericnessness is "how a term is understood by the consuming public." Finally, it severs our Surgicenters analysis from its unique factual context, in which a wealth of exhibits supported a finding that the term "surgicenter" was generic even when taken as a whole (as opposed to the sum of generic parts).

Furthermore, reading the Surgicenters opinion for the rather broad (and somewhat reductionist) principle that "a generic term plus a generic term equals a generic term" would give rise to an unnecessary conflict between that decision and several other cases, decided both before and after Surgicenters, in which we have adopted a more holistic approach to evaluating composite terms. . .

[S]everal pre- and post-Surgicenters cases have announced what could be described as an "anti-dissection rule" for evaluating the trademark validity of composite terms. . . . When Surgicenters is examined in light of these later cases, it becomes clear that Surgicenters should not be read overbroadly to stand for the simple proposition that "generic plus generic equals generic." Rather, Surgicenters must be read in its proper context. First, it must be noted that Surgicenters explicitly recognizes that generic individual terms can be combined to form valid composite marks. . . Second, it must be recalled that we found the term "surgicenter" generic based in large part on a well-developed record of 45 exhibits showing that the term "surgicenter," considered as a whole, was generic (i.e., understood by the consuming public as referring simply to a center at which surgery was performed).

In light of the foregoing discussion, the district court here may have oversimplified matters somewhat when it stated that "the Ninth Circuit has held that a combination of two generic words is also generic, unless the combination is a 'deviation from natural usage' or an 'unusual unitary combination.'" Any arguable imprecision in the district court's application of Surgicenters was harmless, however, because the term "Filipino Yellow Pages" would be unprotectible in any event.

In finding "Filipino Yellow Pages" generic, the district court did not rely solely upon the generic nature and presence in the dictionary of "Filipino" and "yellow pages." The district court also considered other evidence tending to suggest that "Filipino Yellow Pages," even when considered as an entire mark, is generic with respect to telephone directories. The district court took note of the following facts: (1) Jornacion himself appeared to use the term "Filipino Yellow Pages" in a generic sense in the Shareholders' Buy Out Agreement with Oriel, when he "agreed not to compete in the Filipino Directory (Filipino Yellow Pages) in California"; (2) FYP did not bring suit to challenge the marketing of a second Filipino Yellow Pages to the Filipino-American community on the East Coast; and (3) a Los Angeles Times article, in discussing a trend toward specialized yellow pages, appeared to use the term in a generic sense; the article referred to a directory published by one Virgil Junio as "his Filipino yellow pages" instead of using the actual title of Junio's publication.

These three pieces of evidence are not as weighty as the 45 exhibits presented in Surgicenters, in which the record established generic use of the term "surgicenter" by Newsweek magazine, six medical publications, and the Department of Health, Education and Welfare. . . . An important difference between Surgicenters and the instant case should be noted, however. The mark at issue in Surgicenters was a federally-registered mark, and thus the burden of proving genericness rested upon the party challenging the mark's validity. The mark at issue in this case, in contrast, is not registered; thus FYP, as trademark plaintiff, must prove that "Filipino Yellow Pages" is not generic. It does not appear that FYP has offered evidence of nongenericness sufficient to rebut even the fairly modest evidence of genericness offered by AJP. In light of the evidence presented by AJP, it would seem that under the "who-are-you/what-are-you" test, the term "Filipino Yellow Pages" is generic. If faced with the question "What are you?", FYP's Filipino Yellow Pages, AJP's Filipino Consumer Directory, and the Filipino Directory of the U.S.A. and Canada could all respond in the same way: "A Filipino yellow pages." Giving FYP exclusive rights to the term "Filipino Yellow Pages" might be inappropriate because it would effectively "grant [FYP as] owner of the mark a monopoly, since a competitor could not describe his goods as what they are." . . .

. . .

For the foregoing reasons, FYP was unable to establish the trademark protectibility of "Filipino Yellow Pages" as a descriptive mark with secondary meaning. The grant of summary judgment in favor of AJP was proper.

AFFIRMED.