## Facts

- Investacorp, Inc., a Florida financial-services firm, used the name “Investacorp” in connection with its services beginning in 1978.
- Arabian Investment Banking Corporation (Investcorp) E.C., a Bahrain-based investment bank, began doing business in the United States in 1983 using the name “Investcorp.”
- In June 1987, Investcorp sought federal registration of the service mark INVESTCORP; the mark was approved for publication for opposition.
- In October 1987, Investacorp filed an application to federally register INVESTACORP.
- In February 1988, Investacorp filed a notice of opposition before the Trademark Trial and Appeal Board against registration of INVESTCORP.
- Investacorp later sued in federal court alleging service mark infringement and unfair competition under federal law and Florida law, and dilution under Florida’s anti-dilution statute.
- The district court granted summary judgment for Investcorp on all counts, ruling Investacorp lacked a protectable interest in “Investacorp.”
- Investacorp appealed.

## Issues

1. Whether “Investacorp” was a protectable service mark (inherently distinctive or distinctive through secondary meaning) at the time Investcorp entered the U.S. market.
2. Whether Investacorp produced sufficient evidence that “Investacorp” had acquired secondary meaning before Investcorp’s relevant use.
3. Whether, given the record, summary judgment was proper on the infringement, unfair competition, and dilution claims.

## Decision

- The Eleventh Circuit affirmed summary judgment for Investcorp on all claims.
- The court held “Investacorp” was, at most, descriptive and not inherently distinctive.
- The court held Investacorp failed to produce evidence creating a genuine dispute that the mark had acquired secondary meaning by the time Investcorp began using “Investcorp” in the United States.
- Because Investacorp lacked a protectable mark, its federal and state infringement, unfair competition, and dilution claims failed as a matter of law.

## Legal Principles

- Trademark/service mark protection depends on distinctiveness: generic terms are never protectable; descriptive terms are protectable only upon proof of secondary meaning; suggestive, arbitrary, and fanciful marks are inherently protectable.
- A descriptive mark acquires secondary meaning only if, in the minds of the relevant consuming public, the primary significance of the term is the producer rather than the service itself, and that association must exist when the alleged infringer enters the market.
- Proof of secondary meaning commonly turns on factors such as length and manner of use, advertising and promotion, efforts to create source association, and actual public recognition.
- If a plaintiff lacks a protectable mark, trademark infringement and related unfair-competition theories fail because there is no proprietary interest to infringe; a dilution claim likewise fails absent a sufficiently distinctive mark.
- Summary judgment is appropriate where the evidentiary record cannot support a finding of protectability (including secondary meaning), even viewing the facts in favor of the nonmovant.

## Conclusion

The court concluded that “Investacorp” described investment-related corporate services and, without evidence of secondary meaning at the relevant time, was not protectable; therefore, Investcorp was entitled to judgment as a matter of law on the infringement, unfair competition, and dilution claims.


Investacorp, Inc. v. Arabian Inv. Banking Corp. (Investcorp) E.C., 931 F.2d 1519 (11th Cir. 1991)