15.8 INFRINGEMENT—ELEMENTS—VALIDITY—UNREGISTERED MARKS
[Describe plaintiff’s alleged trademark] is not registered. Unregistered trademarks can be valid and provide the trademark owner with the exclusive right to use that mark. Instruction [insert number of instruction regarding Trademark Elements and Burden of Proof, e.g., 15.5] requires the plaintiff to prove by a preponderance of the evidence that [describe plaintiff’s alleged trademark] is valid. A valid trademark is a [word, symbol, or device] that is either:
1. inherently distinctive; or
2. descriptive, but has acquired a secondary meaning.
[Only a valid trademark can be infringed.] [Only if you determine plaintiff proved by a preponderance of the evidence that the [describe plaintiff’s alleged trademark] is a valid trademark should you consider whether plaintiff owns it or whether defendant’s actions infringed it.]
Only if you determine that [describe plaintiff’s alleged trademark] is not inherently distinctive should you consider whether it is descriptive but became distinctive through the development of secondary meaning, as I will direct in Instruction [insert number of instruction regarding Distinctiveness and Secondary Meaning, e.g., 15.10].
This instruction refers to the court’s instruction to the jury that sets out the elements of infringement, e.g., an instruction similar to Instruction 15.5 (Infringement—Elements and Burden of Proof—Trademark) and distinctiveness and secondary meaning, e.g., an instruction similar to Instruction 15.10 (Infringement—Elements—Validity—Distinctiveness—Secondary Meaning). The number that the court assigned to that instruction should be inserted in the first and last paragraphs of this instruction.
A trademark is valid only if it is inherently distinctive or if it became distinctive through development of secondary meaning. Two Pesos, Inc. v. Taco Cabana, Int’l Inc., 932 F.2d 1113 (5th Cir.1991), aff’d, 505 U.S. 763, 769 (1992). Whether a symbol acquired secondary meaning is a question of fact for the jury. See Transgo, Inc. v. Ajac Transmissions Parts Corp., 768 F.2d 1001, 1015 (9th Cir.1985). See also Instruction 15.10 (Infringement—Elements—Validity—Distinctiveness—Secondary Meaning).