Fourth Circuit Finds "OBX" Geographically Descriptive Abbreviation for the Outer Banks
In a fairly straight forward yet interesting trademark case involving rights to the mark "OBX", the Fourth Circuit affirmed the grant of summary judgment to the defendant, finding that OBX is a geographically descriptive abbreviation referring to the Outer Banks of North Carolina that had not acquired secondary meaning and therefore was not a valid trademark. Nonetheless, the Fourth Circuit also affirmed the District Court's exercise of its discretion not to order the cancellation of the registrations the plaintiff had obtained for the OBX mark.
In 1994, James Douglas, the founder of the plaintiff OBX-Stock, Inc., "cleverly invented 'OBX' as an abbreviation for the 'Outer Banks' of North Carolina." The plaintiff then enjoyed considerable success selling a variety of products with the OBX letters affixed to them. Unfortunately for the plaintiff, however, the abbreviation caught on and, as the Court noted, entered the "linguistic commons" such that businesses and residents of the Outer Banks used the abbreviation "on a daily basis to refer to the Outer Banks."
Moreover, in the course of the case, Douglas testified that the company's product "was actually the OBX in general since it had not been used before." Nonetheless, after PTO examiners rejected the plaintiff's application to register the OBX mark five times, OBX-Stock was ultimately successful in obtaining registration but only after "intervention" by North Carolina's congressional delegation (the opinion does not describe the nature of this "intervention" but the Fourth Circuit stated that it undermined any support the registrations may have offered).
After obtaining registrations for the OBX mark, OBX-Stock began efforts to police the mark, including suing the defendant, Bicast, Inc., in connection with its sale of oval stickers bearing "OB Xtreme". OBX lost on summary judgment, however,as the District Court found that the OBX mark had become generic or was geographically descriptive without secondary meaning. Based on what appears to be substantial evidence--particularly the testimony of Douglas that OBX stood for the Outer Banks--and the lack of evidence establishing any secondary meaning, the Fourth Circuit readily agreed with the District Court.
The Fourth Circuit's opinion in OBX-Stock, Inc. v. Bicast, Inc., Nos. 06-1769, 06-1887 (4th Cir., Feb. 27, 2009), can be found here (PDF, 13 pages).
