Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc.
198 F.3d 1143 (1999)
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Rule of Law:
A term composed of generic words is likely also generic if, viewed as a whole, its primary significance to the consuming public is the product itself, not the producer. For an unregistered mark, the plaintiff bears the burden of proving non-genericness, and if the term is merely descriptive, must provide substantial, objective evidence of secondary meaning to gain trademark protection.
Facts:
- Roger Lagmay Oriel and Oscar Jornacion were business partners who published the 'Filipino Directory of California.'
- In 1986, the partners split. In their separation agreement, Jornacion agreed not to compete in the 'Filipino Directory (Filipino Yellow Pages) [market]' for three years.
- After the non-compete expired in 1990, Jornacion formed Filipino Yellow Pages, Inc. (FYP) and began publishing a directory titled 'Filipino Yellow Pages.'
- Oriel's new company, Asian Journal Publications, Inc. (AJP), published a competing directory called the 'Filipino Consumer Directory' and sometimes used the phrase 'Filipino Consumer Yellow Pages' in its advertising.
- An unaffiliated company, Kayumanggi Communications, Inc., marketed a separate directory on the East Coast also called the 'Filipino Yellow Pages.'
- A Los Angeles Times article discussing specialty directories referred to a third party's publication generically as 'his Filipino yellow pages.'
Procedural Posture:
- Filipino Yellow Pages, Inc. (FYP) applied for a federal trademark registration for 'Filipino Yellow Pages,' which the Patent and Trademark Office initially refused as 'merely descriptive.' The application was later amended to claim acquired distinctiveness and remained pending.
- FYP sued Asian Journal Publications, Inc. (AJP) in the U.S. District Court for the Central District of California, alleging trademark infringement.
- AJP filed a motion for summary judgment, arguing that the term 'Filipino Yellow Pages' is generic and thus unprotectible.
- The district court granted summary judgment for AJP, holding that the term is generic and, alternatively, that FYP had failed to produce admissible evidence of secondary meaning.
- FYP, as plaintiff-appellant, appealed the district court's judgment to the U.S. Court of Appeals for the Ninth Circuit.
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Issue:
Is the term 'Filipino Yellow Pages' a protectible trademark for a telephone directory aimed at the Filipino-American community?
Opinions:
Majority - O'Scannlain, J.
No, the term 'Filipino Yellow Pages' is not a protectible trademark. A term is generic if its primary significance to the public is the product type rather than the producer. Because 'Filipino Yellow Pages' is an unregistered mark, the plaintiff (FYP) bears the burden of proving it is not generic. The court rejected a simplistic 'generic plus generic equals generic' formula, instead analyzing the composite term as a whole. However, evidence including the plaintiff's own prior generic use of the term, its use by competitors, and its use in the media indicated that the term describes a category of goods—a yellow pages for Filipinos—rather than a specific brand. Even if the term were descriptive, FYP failed to show secondary meaning, as its only evidence was the inadmissible and self-serving testimony of its own president, which lacks probative value.
Analysis:
This case clarifies the Ninth Circuit's 'anti-dissection' rule for composite trademarks, emphasizing that marks combining generic terms must be analyzed holistically based on public perception, not by simply breaking them down. It distinguishes prior precedent like Surgicenters, explaining that findings of genericness depend on the evidentiary record rather than a rigid formula. The decision reinforces the significant burden on a plaintiff seeking to protect an unregistered mark and underscores the high evidentiary bar for proving secondary meaning, particularly for weak marks that are close to being generic.
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