## Facts

- Filipino Yellow Pages, Inc. (FYP) published a telephone directory titled *Filipino Yellow Pages* aimed at the Filipino-American community.
- Asian Journal Publications, Inc. (AJP) and its principals published a competing directory, *Filipino Consumer Directory*, directed to the same market.
- The parties competed in a niche market for Filipino-oriented directories in California and elsewhere.
- The claimed designation “Filipino Yellow Pages” was not federally registered, and FYP had not obtained PTO registration.
- Evidence showed other publishers used similar terminology, including an unaffiliated directory also called *Filipino Yellow Pages* marketed in the eastern United States.
- FYP sued in federal district court for trademark infringement and related claims based on the alleged mark “Filipino Yellow Pages.”

## Issues

1. Whether “Filipino Yellow Pages,” when used for telephone directories aimed at the Filipino-American community, is generic and therefore incapable of trademark protection.
2. If not generic, whether the term is descriptive and has acquired secondary meaning identifying FYP as the source.
3. For an unregistered mark, which party bears the burden to prove (or disprove) genericness and secondary meaning.

## Decision

- The Ninth Circuit affirmed judgment for AJP and the individual defendants.
- Because the claimed designation was unregistered, FYP bore the burden to prove the term was not generic once genericness was asserted as a defense.
- The court held “Filipino Yellow Pages” was generic for yellow-pages-style directories targeted to Filipino-American consumers and therefore unprotectable.
- In the alternative, even if the term were treated as descriptive, FYP failed to prove secondary meaning.

## Legal Principles

- Trademark terms fall into four categories: generic, descriptive, suggestive, and arbitrary or fanciful.
- Generic terms name the product or service class and can never function as trademarks, even with proof of consumer association.
- Descriptive terms are protectable only upon proof of secondary meaning—consumer perception that the term identifies a single source rather than a product type.
- For unregistered marks, no presumption of validity applies; the plaintiff must prove nongenericness once the defendant raises genericness.
- Genericness is assessed by primary significance to consumers and may be tested by whether the term answers “what are you?” (generic) rather than “who are you?” (source-identifying).

## Conclusion

The Ninth Circuit concluded that “Filipino Yellow Pages” primarily describes a category of directory—yellow-pages-style listings for Filipino-American consumers—rather than a particular publisher, making the term generic and unprotectable; alternatively, FYP did not show secondary meaning sufficient to support protection for an unregistered, descriptive designation.


Filipino Yellow Pages, Inc. v. Asian Journal Publ'ns, Inc., 198 F.3d 1143 (9th Cir. 1999)