The Puerto Rico Supreme Court ("PRSC") has distinguished four types of trademarks: (i) generic; (ii) descriptive; (iii) suggestive; and (iv) arbitrary or fanciful. While the latter two are subject to registration before the Puerto Rico Trademark Office ("PRTO"), generic and descriptive marks are generally not considered subject to registration or trademark protection. A mark is descriptive when it merely imparts information to the public about some ingredient or characteristic of the product. It can achieve secondary meaning, separate from its descriptive nature, if the mark draws reference to the business, rather than the product or service itself, and if certain statutory requirements are met. A generic mark is one where the term used is recognized as the common name of a class or genre, and not of a product or service from a certain source.
In Bedrosian Heres et al. v. Nestlé Purina Petcare, spouses Bedrosian and Corretjer ("Plaintiffs"), filed a lawsuit against Nestlé Purina Petcare d/b/a Purina Puerto Rico and others ("Defendants") for alleged trademark infringement on Bedrosian's "Pet Friendly" trademark and service mark. Plaintiffs claimed that Bedrosian came up with the term "pet friendly" and began using it on or around March 2016 within Puerto Rico. Plaintiffs also had a website that compiled information on pet-friendly businesses around Puerto Rico. Businesses listed on the website were promoted by Plaintiffs and were allowed to use the logo and the "pet friendly" phrase. Plaintiffs used the mark to designate spaces and businesses as pet friendly, meaning that those locations allowed pets. However, they had not registered the trademark before the PRTO or the United States Patent and Trademark Office ("USPTO").
Defendants organized an event where they used the "pet friendly" phrase and a logo allegedly similar to that of Plaintiffs. Plaintiffs sued Defendants for alleged trademark infringement under the Puerto Rico Trademark Act for use of the phrase and logo, as well as alleged misappropriation of Bedrosian's webpage idea. Defendants moved to dismiss the complaint because the Plaintiffs lacked a registered trademark and because the phrase "pet friendly" was a generic trademark not subject to protection. Defendants used screenshots and printouts of webpages, blogs, ads, and social media accounts to show that the term "pet friendly" had been used by many other individuals and entities in Puerto Rico to describe places suitable for pets, even though the term is in the English language.
The PRSC ruled that the mark "pet friendly" was not a descriptive mark that had acquired secondary meaning, but a generic trademark that was unregistrable before the PRTO. Plaintiffs also argued that, being a term in English, "pet friendly" would not be a known or generic term in a mostly Spanish-speaking market. The PRSC disagreed because the term is used colloquially in Puerto Rico by some to precisely describe places and locations suitable for pets. The Court concluded that to protect such a generic mark as a trademark would deprive other business and individuals the use of the term to describe their own products and services.
The PRSC's decision should serve as a reminder that the more creative and/or unique a trademark or a brand is, the more likely it will be protected and able to withstand scrutiny by a court of law.
