## Facts

- 20th Century Wear, Inc. manufactured and sold women’s flannel pajamas and nightgowns using the registered mark “Cozy Warm ENERGY-SAVERS” and a consistent packaging/labeling presentation.
- The products were marketed during the 1970s energy-conservation climate as sleepwear that kept wearers warm and thereby reduced home heating use.
- Sanmark-Stardust Inc. imported and wholesaled competing women’s sleepwear.
- 20th Century alleged Sanmark used “Energy Saver(s)” wording and a similar overall presentation in packaging and promotion, creating confusion as to source.
- 20th Century sued in federal court for infringement of its registered mark under Lanham Act § 32(1) and for New York common-law unfair competition/trade dress.
- The district court classified the mark as suggestive, found infringement and unfair competition, and entered a permanent injunction plus monetary relief, prejudgment interest, and attorneys’ fees.
- Sanmark appealed.

## Issues

1. Whether “Cozy Warm ENERGY-SAVERS” is suggestive (inherently protectable) or descriptive (protectable only upon proof of secondary meaning).
2. If descriptive, whether the record supported a finding that the mark had acquired secondary meaning for Lanham Act infringement liability.
3. Under New York unfair competition/trade dress law, whether secondary meaning and actual confusion are required (particularly for damages) and whether the necessary facts were found.

## Decision

- The Second Circuit reversed the liability determinations and vacated the injunction, damages, interest, and attorneys’ fees award.
- The court held the mark is descriptive, not suggestive, because it directly conveys that the sleepwear is warm and saves energy.
- The court remanded for factual findings on whether the descriptive mark had acquired secondary meaning.
- The court also remanded the New York unfair competition/trade dress claim for findings on whether secondary meaning is required and whether actual confusion must be shown for damages (and, if so, whether it occurred).

## Legal Principles

- Trademark distinctiveness is evaluated on the Abercrombie spectrum; descriptive terms that immediately convey product qualities require secondary meaning for protection.
- A descriptive mark, even if registered, is enforceable under Lanham Act § 32(1) only upon proof that consumers associate the mark with a single source (secondary meaning).
- In assessing descriptiveness, courts may consider common public usage and context showing that a term functions as ordinary descriptive language for energy-conserving goods.
- Where liability and remedies rest on unresolved factual predicates (e.g., secondary meaning; state-law requirements such as actual confusion for damages), appellate courts may vacate relief and remand for specific findings.

## Conclusion

The Second Circuit determined that “Cozy Warm ENERGY-SAVERS” is descriptive and therefore required proof of secondary meaning, vacated the injunction and monetary awards, and remanded for factual findings on secondary meaning and the applicable requirements and evidentiary showings for New York unfair competition and trade dress relief.


20th Century Wear, Inc. v. Sanmark-Stardust Inc., 747 F.2d 81 (2d Cir. 1984)