Cite as 895 F.Supp. 1338 (D.Ariz. 1995)
d. The Genericness Defense
“The general presumption of validity resulting from federal registration includes the specific presumption that the trademark is not generic.” Coca-Cola, 692 F.2d at 1254. Furthermore, the plaintiff is entitled to benefit from any relevant presumptions that support its motion for summary judgment. Id. (citing United States v. General Motors Corp., 518 F.2d 420, 441–42 (D.C.Cir.1975)). Therefore, the plaintiff, relying on the aforementioned presumptions, has met its burden of demonstrating that the genericness of its trademarks does not raise a genuine issue of material fact.
The defendant attempts to rebut the plaintiff’s presumption against genericness by misrepresenting cases and selectively quoting statutes. Section 1064 of the Lanham Act states in pertinent part:
A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become … generic.
15 U.S.C. § 1064(3) (1988). The defendant argues that it is impossible to convey the principles espoused in The URANTIA Book without using “URANTIA” or the symbol of three blue concentric circles. (Def.’s Answer at 19.) As the first sentence quoted above clearly indicates, a mark does not become generic simply because it identifies a unique product.
The defendant correctly states that the “relevant public” for determining genericness is “the pool of potential purchasers of Urantia books.” (Def.’s Br. at 8.) She then inappropriately drains the pool of all but the established “adherents to the Urantia teachings.” Id. The pool, however, must include all potential purchasers: the avid, the novice, and the not yet acquainted. See, e.g., Park ’N Fly, Inc. v. Dollar Park and Fly, Inc., 718 F.2d 327, 330 (9th Cir.1983) (holding relevant public includes not only business operators and participants but also consumers at large), rev’d on other grounds, 469 U.S. 189, 105 S.Ct. 658, 838 L.Ed.2d 582 (1985); Surgicenters of Am., Inc. v. Medical Dental Surgeries, Co., 601 F.2d 1011, 1017 (9th Cir.1979) (finding relevant public includes both medical community and potential patients); Berner Int’l Corp. v. Mars Sales Co., 987 F.2d 975, 983 (3d Cir.1993) (holding relevant public for “air curtain” includes manufacturers, architects, construction companies, building managers, and others); Murphy Door Bed Co. v. Interior Sleep Sys., Inc., 874 F.2d 95, 101 (2d Cir.1989) (finding substantial majority of public considers “Murphy bed” to be generic); Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 640 (Fed.Cir.1991) (defining relevant public as “public which does or may purchase the goods”); see also S.Rep. No. 627, 98th Cong., 2d Sess. 2–4 (1984), U.S.Code Cong. & Admin.News 1984, p. 5708 (explaining relevant public includes both actual and potential purchasers of goods).
The defendant makes the bold statement that “[t]he evidence of dictionaries that do not contain the word Urantia is completely irrelevant.” (Def.’s Br. at 9.) It strains my imagination to think of a product name “that over time the public adopted, or, rather, expropriated, … as a synonym for any [product of that genus],” Murphy Bed, 874 F.2d at 101, but which does not appear in any known dictionary. “There is no real issue as to the generic nature of the words Urantia and Urantian.” (Def.’s Br. at 9.) “The plain fact is that the public at large has no awareness of either the word[s] or symbol.” Id. at 9 n. 7.
Although “URANTIA” and the symbol of three blue concentric circles may be considered generic by a segment of the public that has previously purchased The URANTIA Book, the segment is but a fraction of the relevant public. Therefore, I find insufficient evidence to support the defendant's defense of genericness. Hence, I find that the plaintiff has overcome the first obstacle to proving infringement by showing its trademarks to be valid.
2. Likelihood of Confusion
a. The Eight Factors
Proving one has a valid trademark entitled to protection is rather elementary
