The Flag Company, Inc. v. Steven A. Chan, et al

FILED
U.S. COURT OF APPEALS
ELEVENTH CIRCUIT
DECEMBER 15, 2011
JOHN LEY
CLERK
[DO NOT PUBLISH]
IN THE UNITED STATES COURT OF APPEALS
FOR THE ELEVENTH CIRCUIT
________________________
No. 11-10429
Non-Argument Calendar
________________________
D.C. Docket No. 1:09-cv-01880-CAP
THE FLAG COMPANY, INC.,
llllllllllllllllllllllllllllllllllllllll Plaintiff-Appellee,
versus
STEVEN A. CHAN,
lllllllllllllllllllllllllllllllllllllll lDefendant-Appellant,
STEVEN A. CHAN, LLC,
a California Limited Liability Company,
d.b.a. Five Star Flags,
d.b.a. VI45,
llllllllllllllllllllllllllllllllllllll llDefendant.
________________________
Appeal from the United States District Court
for the Northern District of Georgia
________________________
(December 15, 2011)

-- 1 of 8 --

Before EDMONDSON, CARNES and KRAVITCH, Circuit Judges.
PER CURIAM:
Steven A. Chan, proceeding pro se, appeals from an interlocutory order
granting partial summary judgment to The Flag Company, Inc., his business
competitor. The district court awarded injunctive relief, monetary damages, and
attorney’s fees to Flag Co. on its trademark infringement claim brought under the
Lanham Act. See 15 U.S.C. § 1125(a); id. § 1114; id. § 1117. That claim was one
of three asserted in Flag Co.’s complaint, and other two, which allege violations of
the Anticybersquatting Consumer Protection Act and the Georgia Deceptive Trade
Practices Act, are still pending before the district court. Chan contends that the
evidence establishes that Flag Co.’s FARMING FLAGS trademark is generic and
as a result Flag Co.’s registration of that mark is invalid. He argues that summary1
judgment should be reversed and the FARMING FLAGS marks should be
cancelled.
I.
As an initial matter we consider our subject matter jurisdiction, which is an
issue that we review de novo. AT&T Mobility, LLC v. Nat’l Ass’n for Stock Car
Because Chan is pro se, we construe his brief liberally. See Tannenbaum v. United1
States, 148 F.3d 1262, 1263 (11th Cir. 1998).
2

-- 2 of 8 --

Auto Racing, Inc., 494 F.3d 1356, 1360 (11th Cir. 2007). As a general rule, “an
order adjudicating fewer than all the claims in a suit . . . is not a final judgment
from which an appeal may be taken.” Edwards v. Prime, Inc., 602 F.3d 1276,
1288, 602 F.3d 1276 (11th Cir. 2010). Even so, both sides assert that this Court
has jurisdiction. Flag Co. acknowledges that the district court’s order did not
address all of its claims. It contends, however, that this Court has jurisdiction
under 28 U.S.C. § 1291 to review the district court’s order as a final judgment
because after this appeal was filed, Flag Co. filed in the district court a motion to
dismiss its two remaining claims. Flag Co.’s motion does not create appellate
jurisdiction in this case. See State Treasurer of Michigan v. Barry, 168 F.3d 8, 11
(11th Cir. 1999) (“[A]ppellate jurisdiction over a non-final order cannot be created
by dismissing the remaining claims without prejudice.”).
Even though we do not have jurisdiction under 28 U.S.C. § 1291, under 28
U.S.C. § 1292(a)(1) we do have jurisdiction over district courts’ “[i]nterlocutory
orders . . . granting . . . injunctions.” Section 1292(a)(1) gives us jurisdiction over
the grant of injunctive relief to Flag Co., but Chan more generally challenges the
district court’s grant of summary judgment in Flag Co.’s favor.
We may exercise pendent appellate jurisdiction over a matter that would not
be otherwise appealable if it is “inextricably intertwined” with an appealable
3

-- 3 of 8 --

decision, or if review of the non-appealable decision is necessary to ensure
meaningful review of the appealable one. Swint v. Chambers Cnty. Comm’n, 514
U.S. 35, 51, 115 S.Ct. 1203, 1212 (1995). Here, a review of the district court’s
decision to grant injunctive relief necessarily requires us to determine whether
summary judgment was appropriate on Flag Co.’s trademark infringement claim,
so we will exercise our discretion to review the grant of summary judgment. Cf.
Cable Holdings of Battlefield, Inc. v. Cooke, 764 F.2d 1466, 1472 (11th Cir.
1985) (exercising pendent jurisdiction in order to consider the merits of the district
court’s underlying summary judgment decision in an appeal from a denial of a
preliminary injunction).
II.
We review de novo the grant of summary judgment, applying the same legal
standards as the district court. Tana v. Dantanna’s, 611 F.3d 767, 772 (11th Cir.
2010). “Summary judgment is proper where ‘the pleadings, the discovery and
disclosure materials on file, and any affidavits show that there is no genuine issue
as to any material fact and that the movant is entitled to summary judgment as a
matter of law.’” Id. (quoting Fed. R. Civ. P. 56(c)).
A.
To prove trademark infringement under the Lanham Act, a plaintiff must
4

-- 4 of 8 --

show that it owns a valid mark and that the defendant’s use of its mark is likely to
cause confusion. See 15 U.S.C. § 1125(a); Tana, 611 F.3d at 773. Trademarks are
generally entitled to different levels of protection depending on their level of
distinctiveness. See Tana, 611 F.3d at 773. We have explained:
Our circuit recognizes four categories of distinctiveness, listed in
ascending order of strength: (1) generic—marks that suggest the basic
nature of the product or service; (2) descriptive—marks that
identify the characteristic or quality of a product or service;
(3) suggestive—marks that suggest characteristics of the product or
service and require an effort of the imagination by the consumer
in order to be understood as descriptive; and (4) arbitrary or
fanciful—marks that bear no relationship to the product or service,
and the strongest category of trademarks.
Id. at 774 (quotation marks omitted).
Five years after a mark has been registered, its holder may file an affidavit
with the United States Patent and Trademark Office certifying that the mark has
been in continuous use since registration, that there is no pending proceeding
concerning the mark, and that there has been no adverse decision concerning the
registrant’s ownership of the mark. 15 U.S.C. § 1065. If these requirements are
met, the mark is declared “incontestable,” and is presumed valid. See Dieter v. B
& H Indus. of Sw. Fla., Inc., 880 F.2d 322, 328 (11th Cir. 1989).
Flag Co. has been using the FARMING FLAGS trademark to market and
sell hand-held flags for twenty years. It obtained federal registration for its
5

-- 5 of 8 --

FARMING FLAGS mark in 1994, and later it met the requirements for
incontestability. The validity of an incontestable mark, like FARMING FLAGS,
cannot be challenged on the ground that it is merely descriptive. Id.
A generic term, which is a weaker mark than a descriptive one, “refers to the
genus of which the particular product is a species.” Park ‘N Fly, Inc. v. Dollar
Park and Fly, Inc., 469 U.S. 189, 194, 105 S.Ct. 658, 661 (1985). “Generic terms
are not registrable, and a registered mark may be canceled at any time on the
grounds that it has become generic.” Id. A term may be generic for one category
of goods and non-generic for another. See Abercrombie & Fitch Co. v. Hunting
World, Inc., 537 F.2d 4, 9 (2d. Cir. 1976). “To take a familiar example ‘Ivory’
would be generic when used to describe a product made from the tusks of
elephants but arbitrary as applied to soap.” Id. at 9 n.6.
“A descriptive mark identifies a characteristic or quality of the service or
product [e.g., Vision Center].” Caliber Auto. Liquidators, Inc. v. Premier
Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 938 (11th Cir. 2010) (quotation marks
omitted; alteration in original). For example,“Milk Delivery” could be a generic
service mark for a milk delivery service, while “BarnMilk” could be a descriptive
service mark for the same business. Investacorp, Inc. v. Arabian Inv. Banking
Corp., 931 F.2d 1519, 1522 (11th Cir. 1991).
6

-- 6 of 8 --

Chan argues that FARMING FLAGS is a generic mark in the real estate
business. He asserts that real estate agents often plant small American flags in
homeowners’ yards to promote their services in the communities where they
advertise—areas that are referred to as the agents’ “farms.” According to Chan,
the agents’ promotional give-aways include not just farming flags but also farming
postcards, farming notepads, and farming refrigerator magnets.
As Chan’s own argument shows, FARMING FLAGS is, at the very least, a
descriptive trademark. It is not generic. “Farming” is a characteristic or quality of
the product sold—flags. See Caliber Auto. Liquidators, 605 F.3d at 938. The
validity of an incontestable mark, like FARMING FLAGS, cannot be challenged
on the ground that it is merely descriptive. The district court properly granted
summary judgment in favor of Flag Co. on its trademark infringement claim.
B.
In addition his argument that the FARMING FLAGS mark is generic, Chan
also asserts a slew of challenges to the district court’s discovery and evidentiary
rulings. Even if the district court had made the evidentiary and discovery errors
that Chan asserts it did, his evidence was still insufficient to establish a genuine
issue of material fact about the validity of the “FARMING FLAGS” mark. The
evidence showed, at most, that the mark was merely descriptive, which is not
7

-- 7 of 8 --

enough to rebut a presumption of validity. See Dieter, 880 F.2d at 328. Thus,
even if the evidentiary rulings Chan complains about were made in error, any error
was harmless. See Hearn v. McKay, 603 F.3d 897, 904 n.11 (11th Cir. 2010)
(“Erroneous evidentiary determinations that do not affect the substantial rights of a
party must be disregarded.”) (citing 28 U.S.C. § 2111; Fed. R. Civ. P. 61; Fed. R.
Evid. 103(a)).
AFFIRMED.
8

-- 8 of 8 --