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., 198 F.3d 1143

Summary

Appellees filed suit against appellant in district court on claims including trademark infringement, unfair competition and trademark dilution under state law. The district court granted appellees summary judgment holding that the term "Filipino Yellow Pages" was generic, and even if the term were descriptive, appellee was still entitled to summary judgment because appellant had failed to produce evidence of secondary meaning. The district court dismissed appellant's trademark claims with prejudice and dismissed appellant's other claims without prejudice, subject to refiling in state court. The court of appeals affirmed the district court's grant of summary judgment in favor of appellees. The court affirmed, concluding that appellant had failed to establish secondary meaning for "Filipino Yellow Pages," and thus the term, even if descriptive rather than generic, was not a valid and protectable trademark with respect to a telephone directory for the Filipino-American community.