## Facts

- Horizon Mills Corp., a textile converter, owned a federal registration for the trademark SLINKY for “fabrics used in clothing and household products.”
- Horizon alleged first use of SLINKY for an acetate-and-spandex fabric in July 1991 and obtained ownership of the mark after a prior registrant’s cancellation proceeding.
- QVC operated a home-shopping retail business and marketed women’s apparel, including goods made from acetate-spandex and other man-made fibers.
- QVC used the term “slinky” in advertising and on-air descriptions of women’s apparel and fabrics.
- Horizon sued for federal trademark infringement, false designation of origin, New York common-law unfair competition, and New York dilution.
- QVC moved for summary judgment, arguing “slinky” was generic in the women’s apparel and fabric trade and therefore incapable of trademark protection.

## Issues

1. Whether SLINKY, as used for fabrics, was generic such that the mark was invalid and QVC was entitled to summary judgment on Horizon’s federal and state infringement, unfair competition, and dilution claims.
2. Whether QVC’s evidence (including extensive media usage) established, as a matter of law, that the primary significance of “slinky” to relevant consumers was a product category rather than a source identifier.

## Decision

- The court denied QVC’s motion for summary judgment.
- The court held that genuine disputes of material fact existed as to whether SLINKY was generic or instead descriptive and potentially protectable upon proof of secondary meaning.
- The court permitted Horizon’s Lanham Act and New York law claims to proceed.

## Legal Principles

- A federally registered mark is presumed valid; a party asserting genericness bears the burden to overcome that presumption.
- Genericness turns on consumer perception—whether the term’s primary significance to the relevant public is the product/class rather than the producer.
- Generic terms name the genus of goods and are never protectable; descriptive terms describe qualities or characteristics and may be protected upon proof of secondary meaning.
- Evidence of third-party or media usage may be insufficient on summary judgment if it is ambiguous as to whether the term is used as a class name; stronger proof of consumer perception (often surveys) is commonly expected.
- Summary judgment is improper where classification of a term (generic vs. descriptive) and the existence of secondary meaning present fact questions on which a reasonable factfinder could reach different conclusions.

## Conclusion

The court refused to invalidate SLINKY on summary judgment because QVC did not conclusively show that consumers primarily understood “slinky” as a generic name for a type of fabric or apparel, leaving triable issues on distinctiveness and secondary meaning.


Horizon Mills Corp. v. QVC, Inc., 161 F. Supp. 2d 208 (S.D.N.Y. 2001)