Filipino Yellow Pages v. Asian Journal

• Decision Date: 06 December 1999
• Docket Number: No. 98-55366,98-55366
• Citation: 198 F.3d 1143
• Parties: (9th Cir. 1999) FILIPINO YELLOW PAGES, INC., a corporation, Plaintiff-counter-defendant-Appellant, v. ASIAN JOURNAL PUBLICATIONS, INC., a corporation; ROGER LAGMAY ORIEL; CORA MACABAGDAL ORIEL, Defendants-counter-claimants-Appellees
• Court: U.S. Court of Appeals — Ninth Circuit

Page 1143

198 F.3d 1143 (9th Cir. 1999)

FILIPINO YELLOW PAGES, INC., a corporation, Plaintiff-counter-defendant-Appellant, v. ASIAN JOURNAL PUBLICATIONS, INC., a corporation; ROGER LAGMAY ORIEL; CORA MACABAGDAL ORIEL, Defendants-counter-claimants-Appellees.

No. 98-55366

U.S. Court of Appeals for the Ninth Circuit

Argued and Submitted September 27, 1999

Filed December 6, 1999

COUNSEL: Robert Asa Crook (argued), Bander Law Firm, Los Angeles, California, for the plaintiff-appellant.

Willmore F. Holbrow, III (argued), Dennis G. Martin, Blakely, Sokoloff, Taylor & Zafman, Los Angeles, California, for the defendants-appellees.

Appeal from the United States District Court for the Central District of California; Consuelo B. Marshall, District Judge, Presiding. D.C. No. CV-96-05359-CBM

Before: Diarmuid F. O'Scannlain, Ferdinand F. Fernandez, and Thomas G. Nelson, Circuit Judges.

OPINION

O'SCANNLAIN, Circuit Judge:

We must decide whether the publisher of a telephone directory for the Filipino-American community can establish that the term "Filipino Yellow Pages" is protectible under trademark law.

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.

AJP's Filipino Consumer Directory has a white-pages section, which contains general reference information as well as a listing of people and organizations affiliated with the Filipino-American community. The Filipino Consumer Directory also has a yellow pages section containing information about businesses serving the Filipino-American community. AJP periodically uses the term "Filipino Consumer Yellow Pages" in print advertisements directed at potential advertisers. These advertisements either reference the full name of the directory or are found within the Filipino Consumer Directory itself.

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." The PTO informed FYP that because its application "indicate[d] use of the mark for a significant time," however, FYP could amend its application to seek registration based on acquired distinctiveness. The PTO further advised FYP that its amended application would have to include the following disclaimer: "No claim is made to the exclusive right to use [the term] `yellow pages' apart from [`Filipino Yellow Pages']." FYP subsequently amended its application for trademark registration to seek registration based on acquired distinctiveness. FYP's application for trademark registration remains pending at the current time.¹

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 support of this contention, AJP relied upon:

1. the presence in the dictionary and generic nature of the individual terms "Filipino" and "yellow pages";

2. Jornacion's own generic use of the term "Filipino Yellow Pages" in the Agreement with Oriel, in which Jornacion "agree[d] not to com pete in the Filipino Directory (Filipino Yellow Pages) [market] in California . . . .";

3. the marketing of a second Filipino Yellow Pages, that of Kayumanggi Communications, to the Filipino-American community on the East Coast; and

4. generic usage by the media of the term "Filipino Yellow Pages," in a Los Angeles Times article on specialty yellow pages which stated as fol lows: "Virgil Janio of Los Angeles sells ads nationwide for his Filipino yellow pages . . . ."

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). As evidence of secondary meaning, FYP offered the declaration of Jornacion, its founder and president. In his declaration, Jornacion claimed that FYP "has been directly injured by [defendant AJP's] unauthorized use of [FYP's] directory name," suffering lost revenues of at least $82,000; that he "received numerous calls from the defendant's advertisers who were upset that their respective advertisements had not been properly placed"; and that the term "Filipino Yellow Pages" has acquired secondary meaning within the FilipinoAmerican community. Jornacion was unable to identify any of the advertisers who supposedly contacted him to complain of incorrect placement of their advertisements. AJP objected to Jornacion's testimony regarding lost revenues and advertiser confusion as lacking a proper foundation, and the district court sustained these objections, striking from the record the challenged portions of the Jornacion declaration.

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.² 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.

FYP timely appealed.

II

The first issue presented is whether the term "Filipino Yellow Pages" is generic with respect to telephone directories targeted at the Filipino-American community. If the term is generic, it cannot be the subject of trademark protection under any circumstances, even with a showing of secondary meaning.

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. See 15 U.S.C. S 1057(b) ("A certificate of registration of a mark . . . shall be prima facie evidence of the validity of the registered mark . . . ."). 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. See, e.g., Blinded Veterans Ass'n v. Blinded American Veterans Found., 872 F.2d 1035, 1041 (D.C. Cir. 1989); A.J. Canfield Co. v. Honickman, 808 F.2d 291, 297 (3d Cir. 1986); Conference of Bar Examiners v. Multistate Legal Studies, 692 F.2d 478, 488 (7th Cir. 1982); Intel Corp. v. Advanced Micro Devices, Inc., 756 F. Supp. 1292, 1295 (N.D. Cal. 1991); 1 J. Thomas McCarthy, Trademarks and Unfair Competition S 12:2 (2d ed. 1984). 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

Case law recognizes "four different categories of terms with respect to trademark protection: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful." Surgicenters of America, Inc. v. Medical Dental Surgeries Co., 601 F.2d 1011 1014 (9th Cir. 19...