This service mark infringement case is about the use of a purely descriptive term, “Ski,” in conjunction with a geographically descriptive term, “Vail,” or more precisely, “Ski Vail.” Plaintiff Vail Associates (VA), owner of the Vail Ski Resort, has a registered incontestable service mark in the latter, but not the former term. VA’s service mark registration describes “Vail” as encompassing the gamut of commercial recreational activities and accompanying amenities available in and around the Town of Vail, Colorado, save maybe golf. According to the registration, VA’s mark encompasses “downhill skiing facilities, ice skating facilities, crosscountry ski trails and expeditions, hiking and back-packing trails, and horseback riding, . . . resort hotel and restaurant services, and retail store services in the field of recreational equipment.” United States Patent and Trademark Office (PTO), Reg. No. 1,521,276 (Jan. 17, 1989). Defendant Vend-Tel-Co (VTC) meanwhile has a registered service mark on the vanity or alphanumeric telephone number “1-800-SKIVAIL,” which offers “marketing services related to the ski industry, namely providing an automated phone switching system to offer services available in or near Vail, Colorado and nearby resort locations.” PTO, Reg. No. 2,458,894 (June 12, 2001).
VA’s essential claim is that VTC’s use of the geographically descriptive term “Vail” in combination with the descriptive term “Ski” infringes its “Vail” mark, making VTC’s use of 1-800-SKI-VAIL violative of the Lanham Act. Specifically, VA claims direct confusion, that is to say VTC’s use of the vanity number is likely to cause consumers to believe that VA or its ski resort is the source of VTC’s phone service. See Australian Gold, Inc. v. Hatfield, 436 F.3d 1228, 1238 (10th Cir. 2006) (distinguishing direct from indirect confusion). Consumers, so goes VA’s theory of the case, are more likely to dial the number because they perceive it as associated with VA’s services. This, in turn, allows VTC to divert business from VA by referring consumers elsewhere.
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