FOR PUBLICATION

ATTORNEY FOR APPELLANT:                     ATTORNEY FOR APPELLEE:

JONATHAN A. WATSON                          MICHAEL S. BERGERSON
Wandling & Associates                       Law Offices of Michael S. Bergerson
South Bend, Indiana                         Michigan City, Indiana



                          IN THE                                     Apr 15 2013, 8:24 am
                COURT OF APPEALS OF INDIANA

SERENITY SPRINGS, et al,          )
                                  )
      Appellants,                 )
                                  )
             vs.                  )                No. 46A03-1205-MI-214
                                  )
THE LAPORTE COUNTY CONVENTION AND )
VISITORS BUREAU,                  )
                                  )
      Appellee.                   )


                APPEAL FROM THE LA PORTE SUPERIOR COURT
                     The Honorable William J. Boklund, Judge
                          Cause No. 46D04-1101-MI-1



                                  April 15, 2013


                           OPINION - FOR PUBLICATION


FRIEDLANDER, Judge
        Serenity Springs, Inc. and its principal owner, Laura Ostergren, (collectively, Serenity)

appeal from the trial court’s order permanently enjoining Serenity from using the designation

“Visit Michigan City LaPorte” 1 and ordering Serenity to transfer the domain name

registration for visitmichigancitylaporte.com to the LaPorte County Convention and Visitors

Bureau (the Bureau). Serenity raises three issues, which we consolidate and restate as

follows:     Did the trial court err in concluding that Serenity committed trademark

infringement and cybersquatting? The Bureau cross-appeals and requests an award of

appellate attorney fees. Concluding that the Bureau did not establish that Serenity committed

trademark infringement or cybersquatting because it failed to establish that it held a valid and

protectable trademark in the designation “Visit Michigan City LaPorte,” we reverse the trial

court’s judgment and remand with instructions to consider the Bureau’s remaining claims.

Additionally, because Serenity has prevailed in this appeal, we deny the Bureau’s request for

appellate attorney fees.

        The Bureau is a special-purpose governmental unit governed by Ind. Code Ann. § 6-9-

6 (West, Westlaw current through 2012 2nd Reg. Sess.). Its mission statement provides that it

is “the official destination marketing organization that represents the visitor industry and

communities to create economic growth from visitor expenditures.” Appellee’s Appendix at

6. The Bureau’s goal is to increase tourism in LaPorte County, and in doing so, the Bureau



1
 Throughout the record, this designation is referred to with slight variations, including “Visit Michigan City
LaPorte,” “VISITMICHIGANCITYLAPORTE,” and “visitmichigancitylaporte.” For purposes of clarity, we
will refer to the designation as “Visit Michigan City LaPorte,” except when we refer specifically to a domain
name.


                                                      2
promotes a number of hotels and attractions in the area. Serenity operates a hotel resort in

LaPorte County, which is one of the businesses promoted by the Bureau.

       In early 2009, the Bureau contracted with a private marketing firm to conduct a

branding study for the purposes of identifying new and better ways to promote tourism in the

area. On September 9, 2009, the Bureau held a public meeting at which the results of the

branding study were announced, and a representative of Serenity was in attendance. The

Bureau’s representatives announced that the phrase “Visit Michigan City LaPorte” had been

identified as the branding identifier for the area.

       Immediately after the meeting, an employee of Serenity registered the domain name

“visitmichigancitylaporte.com” at Ostergren’s behest and set it up to redirect internet traffic

to Serenity’s website. Later that day, an employee of the Bureau attempted to register the

same domain name, but discovered that it had already been purchased and was being used to

direct internet traffic to Serenity’s website. The Bureau was able to register a number of

similar domain names, including visitmichigancitylaporte.org, visitmichigancitylaporte.net,

and michigancitylaporte.com.

       Thereafter, the Bureau sent a cease-and-desist letter to Serenity claiming that Serenity

had   infringed    its   trademark     and   committed     cybersquatting     by   registering

visitmichigancitylaporte.com. Serenity responded that it had been unable to find any federal

or state trademark registrations for Visit Michigan City LaPorte and further claimed that (1)

Serenity had not committed trademark infringement because it registered and began using the

visitmichigancitylaporte.com domain name before the Bureau made any commercial use of


                                               3
the designation Visit Michigan City LaPorte, and (2) that the designation was not protectable

as a trademark because it was merely descriptive and had not acquired distinctiveness.

Appellee’s Appendix at 53-54.

       On April 29, 2010, the Bureau filed an application with the Secretary of State to

register “‘Visit Michigan City LaPorte’ and logo” as a trademark under the Indiana

Trademark Act. Appellant’s Appendix at 17. In its application, the Bureau indicated that the

mark was first used in commerce on September 9, 2009, and disclaimed any rights to the

words “Michigan City” or “LaPorte.” Id. The Bureau received a certificate dated May 13,

2010 indicating that “Visit Michigan City LaPorte” had been registered as a trademark with

the Secretary of State. Id. at 16. The certificate also indicated that the mark was first used on

September 9, 2009, and the words “Michigan City LaPorte” had been disclaimed. Id.

       On May 26, 2011, the Bureau sent another cease-and-desist letter to Serenity, again

asserting that Serenity was infringing its rights in the now-registered trademark. The Bureau

attached a copy of the certificate of trademark registration to the letter and informed Serenity

that the letter would be its final attempt to resolve the matter before taking legal action.

       Serenity sent a response letter to the Bureau on June 1, 2010. In the letter, Serenity

again asserted that it was the first party to use the mark in commerce, and argued further that

the Bureau’s registration of the mark did not affect Serenity’s common-law rights to use the

mark or confer retroactive trademark rights. Serenity stated that it was willing to assign the

domain name to the Bureau if it could provide proof that it first used the mark in commerce

on or before September 9, 2009. Serenity argued that if the Bureau had not used the mark in


                                               4
commerce by that date, it had fraudulently misrepresented the date of first use on the

application for trademark registration, which would result in cancellation of the registration.

        On January 4, 2011, the Bureau filed a complaint against Serenity alleging trademark

infringement, cybersquatting, and unfair competition.2 The Bureau also sought and obtained

a preliminary injunction prohibiting Serenity from using the domain name. The matter

proceeded to a bench trial on March 8, 2012, and the trial court entered judgment in favor of

the Bureau on May 1, 2012. The trial court concluded that Serenity had violated Indiana law

by committing trademark infringement and “cybersquatting that approaches cyberpiracy[.]”

Appellant’s Appendix at 13. The trial court permanently enjoined Serenity from using the

Visit Michigan City LaPorte designation or the domain name visitmichigancitylaporte.com,

and further ordered Serenity to transfer the domain name registration to the Bureau. This

appeal ensued.

                                                     1.

        Serenity appeals from a judgment entered following a bench trial. In reviewing claims

tried by the bench without a jury, our court shall not set aside the judgment “unless clearly

erroneous, and due regard shall be given to the opportunity of the trial court to judge the

credibility of the witnesses.” Ind. Trial Rule 52(A). “In determining whether a judgment is

clearly erroneous, we will not reweigh the evidence or determine the credibility of witnesses

but will consider only the evidence that supports the judgment and the reasonable inferences



2
  The parties have not provided us with a copy of the Bureau’s complaint. We are able to discern the basis of
the complaint, however, from the copy of Serenity’s answer, which was included in the Appellee’s Appendix.


                                                     5
to be drawn from that evidence.” Bennett v. Broderick, 858 N.E.2d 1044 (Ind. Ct. App.

2006), trans. denied.

       We define the clearly erroneous standard based upon whether the party is appealing a

negative or an adverse judgment. Garling v. Ind. Dep’t of Natural Res., 766 N.E.2d 409

(Ind. Ct. App. 2002), trans denied. “A negative judgment is one entered against a party who

bears the burden of proof, while an adverse judgment is one entered against a party defending

on a given question.” Id. at 411. In the instant case, the trial court entered judgment in favor

of the Bureau, the party bearing the burden of proof at trial. Accordingly, Serenity is

appealing an adverse judgment. Under these circumstances, we hold the trial court’s findings

clearly erroneous if they are not supported by substantial evidence of probative value.

Garling v. Ind. Dep’t of Natural Res., 766 N.E.2d 409. Moreover, “[e]ven if the supporting

evidence is substantial, we will reverse the judgment if we are left with a definite and firm

conviction a mistake has been made.” Id. at 411.

       Serenity argues that the trial court erred in concluding that it had committed trademark

infringement and cybersquatting because (1) the Visit Michigan City LaPorte designation is

geographically descriptive and not subject to trademark protection, and (2) alternatively, if

the designation is protectable, Serenity Springs acquired superior rights to the mark because

it was the first to use it in commerce. As an initial matter, we note that the trial court

concluded that the law of trademarks did not apply to the Bureau with the same force as a

private entity due to the transparency requirements imposed upon governmental units.

Specifically, the court concluded


                                               6
       34. That the construction of trademark law suggested by [Serenity] does not
       take into account demands of transparency placed on governmental entities
       concerning how they do business, and to construe the law so as to require
       government to do business just as private concerns do business would violate
       those laws that demand openness in government.
       35. The demand for openness in government required [the Bureau] to reveal
       matters that in private business would not have been revealed publicly, thereby
       jeopardizing [the Bureau’s] ability to protect its mark and its investment in
       money.
       36. The construction of trademark law suggested by [Serenity] would require
       that [the Bureau] do business in a manner similar to a private entity, without
       regard to the requirements placed on governmental units by Indiana law,
       including the Open Door Law. Conducting business in such a manner makes it
       impossible for a governmental entity to protect its investment of tax money in
       projects such as this one.

Appellant’s Appendix at 11.

       Serenity argues that “adopting the trial court’s reasoning would, in effect, create an

exception to a statutory rule of law that would apply in nearly every situation where a public

entity and private entity were in competition.” Appellant’s Brief at 17. We agree. This court

has long held that the exclusive right to use a mark is acquired through adoption and use of

the mark in commerce. See Johnson v. Glassley, 118 Ind. App. 704, 83 N.E.2d 488 (1949)

(“[t]he mere adoption of a particular name as a trade name, without actual use thereof in the

market, confers no right thereto, even though such adoption is publicly declared” ); Hartzler

v. Goshen Churn Ladder Co., 55 Ind. App. 455, 104 N.E. 34 (1914). We are unaware of any

authority suggesting that governmental units need not comply with the use requirement in

order to acquire exclusive rights to use a particular mark. To the extent the trial court

concluded that governmental entities competing with private entities are entitled to extra

protection or relieved of the burden of establishing the elements of trademark infringement


                                              7
claims, such conclusion was error.

       Before turning to the merits of Serenity’s argument concerning the validity of the

Bureau’s claimed trademark, a brief review of the law of trademarks is in order. Trademark

law is a subspecies of the law of unfair competition. 1 J. Thomas McCarthy, McCarthy on

Trademarks and Unfair Competition § 2.7 (“A basic aspect of the United States economy is

that of the market place policed by laws that set a minimum level of fair competition. The

law of trademarks is but a branch of this broader area called the law of ‘Unfair Competition

or ‘Unfair Trade Practices.’” (footnote omitted)); 20 Ind. Law Encyc. Monopolies and Unfair

Trade § 8 (noting that “trademark infringement is one type of unfair competition.” (footnote

omitted)).

       The goal of trademark protection is to allow a firm to affix an identifying mark
       to its product (or service) offering that will, because it is distinctive and no
       competitor may use a confusingly similar designation, enable the consumer to
       discover in the least possible amount of time and with the least possible
       amount of head-scratching whether a particular brand is that firm’s brand or a
       competitor’s brand.

Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc., 781 F.2d 604 (7th Cir. 1986); see also Carroll v.

Lordy, 431 N.E.2d 118, 123 (Ind. Ct. App. 1982) (“[t]he purpose of a trademark is to identify

the source of the product, not the product itself”).

       Trademark law is rooted in English common law, and was “largely codified” at the

federal level in the Trademark Act of 1946, commonly known as the Lanham Act. Moseley

v. V Secret Catalogue, Inc., 537 U.S. 418, 428 (2003). The Lanham Act defines a trademark,

in relevant part, as “any word, name, symbol, or device, or any combination thereof . . . used

by a person . . . to identify and distinguish his or her goods, including a unique product, from

                                               8
those manufactured or sold by others and to indicate the source of the goods, even if that

source is unknown.” 15 U.S.C.A. § 1127 (West). A “service mark” is the same as a

trademark, except that it relates to services as opposed to goods or products. Id. The

Lanham Act provides the holder of a mark with a cause of action against infringers. 15

U.S.C.A. § 1125 (a) (West). The plaintiff must prove two elements in order prevail on a

claim of trademark infringement under the Lanham Act: (1) that he or she has a protectable

ownership interest in the mark, and (2) that the defendant’s use of the mark is likely to cause

consumer confusion. Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225 (5th Cir.

2010); see also Tana v. Dantanna’s, 611 F.3d 767 (11th Cir. 2010).

        In 1999, Congress passed the Anti-Cybersquatting Consumer Protection Act (ACPA)

 as an amendment to the Lanham Act for the purpose of prohibiting “cybersquatting.”

 DaimlerChrysler v. The Net Inc., 388 F.3d 201, 204 (6th Cir. 2004).

       ‘[C]ybersquatting’ occurs when a person other than the trademark holder
       registers the domain name of a well[-]known trademark and then attempts to
       profit from this by either ransoming the domain name back to the trademark
       holder or by using the domain name to divert business from the trademark
       holder to the domain name holder. A trademark owner asserting a claim under
       the ACPA must establish the following: (1) it has a valid trademark entitled to
       protection; (2) its mark is distinctive or famous; (3) the defendant’s domain
       name is identical or confusingly similar to, or in the case of famous marks,
       dilutive of, the owner’s mark; and (4) the defendant used, registered, or
       trafficked in the domain name (5) with a bad faith intent to profit.

Id. (citations omitted); see also Felsher v. Univ. of Evansville, 755 N.E.2d 589 (Ind. 2001)

(discussing Lanham Act claims against cybersquatters and cyber copycats). Thus, in order to

prevail on either a trademark infringement or cybersquatting claim under the Lanham Act,



                                              9
the plaintiff must first prove that he or she has a valid and protectable mark. 3

        To receive protection under the Lanham Act as a trademark or service mark, a

designation must be “distinctive.” 2 J. Thomas McCarthy, McCarthy on Trademarks and

Unfair Competition § 11.2 (“‘Distinctive’ has a special meaning in trademark law. . . .

Without achieving distinctiveness . . . a designation does not have the legal status of a

‘trademark’ or ‘service mark.’ No distinctiveness—no mark.” (footnote omitted)). As the

U.S. Supreme Court has explained, marks are classified into the following categories of

increasing distinctiveness: marks that are (1) generic; (2) descriptive; (3) suggestive; (4)

arbitrary; or (5) fanciful. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (citing

Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2nd Cir. 1976)).

        The latter three categories of marks—those that are suggestive, arbitrary, or fanciful—

are considered inherently distinctive and entitled to trademark protection “because their

intrinsic nature serves to identify a particular source of a product[.]” Id. at 768. “Fanciful

marks are, in essence, made-up words expressly coined for serving as a trademark. Some

examples of fanciful marks are Clorox®, Kodak®, Polaroid®, and Exxon®.” Sara Lee

Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996). Arbitrary marks consist of



3
  In its order, the trial court concluded that Serenity had committed “cybersquatting that approaches
cyberpiracy, in violation of [Indiana] common law.” Appellant’s Appendix at 13. In support of this
conclusion, however, the court cited the ACPA and Felsher v. Univ. of Evansville, which discussed
cybersquatting as a potential violation of the Lanham Act. 755 N.E.2d 589 (Ind. 2001). In other words, the
authorities relied upon by the trial court support a cause of action for cybersquatting under federal statutory law
only. The parties have not directed our attention to, and we are unaware of, any authority suggesting the
existence of an Indiana statutory or common-law cause of action for cybersquatting per se. Of course, this
does not preclude the possibility that acts amounting to cybersquatting under the Lanham Act and ACPA might
also be actionable under the Indiana Trademark Act or common-law unfair competition principles.


                                                       10
words or symbols that are in common usage, but are arbitrarily applied to the goods or

services “because they do not suggest or describe any quality, ingredient, or characteristic of

the goods they serve . . . . Examples include Tea Rose® flour, Camel® cigarettes, and

Apple® computers.” Id. “Suggestive marks connote, without describing, some quality,

ingredient, or characteristic of the product. Coppertone®, Orange Crush®, and Playboy® are

good examples of suggestive marks because they conjure images of the associated products.”

Id.

       Descriptive marks and generic marks, on the other hand, are not inherently distinctive.

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763. Generic designations refer merely “to

the genus of which the particular product is a species,” and are never protectable as

trademarks because they do not indicate the particular source of an item. Id. at 768; see also

Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964, 976 (10th Cir. 2002) (identifying the word

“cola” as an example of a generic designation). Descriptive marks describe “‘the ingredients,

qualities, or characteristics of an article of trade or a service[.]’’’ Platinum Home Mortg.

Corp. v. Platinum Fin. Group, Inc., 149 F.3d 722, 727 (7th Cir. 1998). As a general matter,

descriptive marks are not protectable as trademarks, “‘both because they are poor means of

distinguishing one source of services from another and because they are often necessary to

the description of all goods or services of a similar nature.’” Mil-Mar Shoe Co. v. Shonac

Corp., 75 F.3d 1153 (7th Cir. 1996) (quoting Liquid Controls Corp. v. Liquid Control Corp.,

802 F.2d 934, 936 (7th Cir. 1986)). Descriptive marks will become protectable, however,

“where the holder can establish that the mark has acquired ‘secondary meaning’ in the


                                              11
collective consciousness of the relevant community.” Id. (quoting Gimix, Inc. v. JS & A

Group, Inc., 699 F.2d 901, 907 (7th Cir. 1983)). Secondary meaning exists when consumers

regard the designation not as a description, but as the name of the product or service itself.

Packman v. Chicago Tribune Co., 267 F.3d 628 (7th Cir. 2001). Geographically descriptive

designations generally fall within the descriptive category; thus, to be protected, they must

have acquired secondary meaning. 2 McCarthy §§ 14:1 (“’[i]f a geographic term is used

merely to indicate the location or origin of the goods and services, it is purely descriptive”).

A mark’s proper placement on the spectrum of distinctiveness is a question of fact. Welding

Servs., Inc. v. Forman, 509 F.3d 1351 (11th Cir. 2007).

       Under the Lanham Act, the holder of a mark may request the United States Patent and

Trademark Office (USPTO) to register the mark on the principal register. 15 U.S.C.A. §

1051, et seq.    Marks that are “primarily descriptive” and “primarily geographically

descriptive” of the goods or services with which they are associated are not eligible for

registration on the principal register unless they have “become distinctive of the applicant’s

goods in commerce.” 15 U.S.C.A. § 1052(e), (f) (West). Thus, registration of a descriptive

mark on the principal register requires a showing of secondary meaning. Kohler Co. v. Moen

Inc., 12 F.3d 632 (7th Cir. 1993). Although the Lanham Act protects both registered and

unregistered marks, registration is desirable because it constitutes prima facie evidence of the

mark’s validity. See 15 U.S.C.A. §§ 1057(b), 1115(a). Thus, federal registration of a mark

“‘entitles the plaintiff to a presumption that its registered trademark is not merely descriptive

or generic, or, if merely descriptive, is accorded secondary meaning.’” Thomas & Betts


                                               12
Corp. v. Panduit Corp., 138 F.3d 277, 301 (7th Cir. 1998) (quoting Liquid Controls Corp. v.

Liquid Control Corp., 802 F.2d at 936). The plaintiff bears the burden of establishing that an

unregistered mark is entitled to protection. Platinum Home Mortg. Corp. v. Platinum Fin.

Group, Inc., 149 F.3d 722.

       The Indiana Trademark Act is similar, and in some respects identical, to the Lanham

Act. Although Indiana’s body of trademark law is relatively undeveloped, the General

Assembly has specified that the Indiana Trademark Act “is intended to provide a system of

state trademark registration and protection that is consistent with the federal system of

trademark registration and protection under the Trademark Act of 1946.” Ind. Code Ann. §

24-2-1-0.5 (West, Westlaw current through 2012 2nd Reg. Sess.). Moreover, “[a] judicial or

an administrative interpretation of a provision of the federal Trademark Act may be

considered as persuasive authority in construing a provision of” the Indiana Trademark Act.

Id.

       The Indiana Trademark Act’s definitions of “trademark” and “service mark” track the

Lanham Act’s definitions of those terms nearly verbatim. See I.C. § 24-2-1-2(8), (9) (West,

Westlaw current through 2012 2nd Reg. Sess.). Like the Lanham Act, the Indiana Trademark

Act does not adversely affect common-law trademark rights. See I.C. § 24-2-1-15 (West,

Westlaw current though 2012 2nd Reg. Sess.). Registration of a trademark or service mark

with the office of the Secretary of State provides a registrant with a remedy for the

infringement thereof under the Indiana Trademark Act. I.C. § 24-2-1-14(a) (West, Westlaw

current though 2012 2nd Reg. Sess.); Felsher v. Univ. of Evansville, 755 N.E.2d 589. Like


                                             13
the Lanham Act, the Indiana Trademark Act prohibits the registration of marks that are

“primarily geographically descriptive or deceptively geographically misdescriptive of the

goods or services[.]” I.C. § 24-2-1-3 (West, Westlaw current through 2012 2nd Reg. Sess.).

This provision does not, however, “prevent the registration of a mark that is used in Indiana

by the applicant and has become distinctive of the applicant’s goods or services.” Id. In

other words, a geographically descriptive mark may be registered under the Indiana

Trademark Act if it has acquired secondary meaning. 4 See Restatement (Third) of Unfair

Competition § 14 (1995) (providing that a designation that is likely to be perceived by

purchasers as merely descriptive of the geographical origin or location of the goods or

services with which it is associated is not distinctive and protectable unless it has acquired

secondary meaning); cf. Keaton and Keaton v. Keaton, 842 N.E.2d 816, 821 (Ind. 2006)

(“Personal names, including surnames, are not ‘inherently distinctive’ and are only

protectable as trademarks or trade names upon proof of secondary meaning.”).

        Serenity argues that the designation at issue in this case, Visit Michigan City LaPorte,

is primarily geographically descriptive and not subject to protection as a trademark. 5 The

trial court did not specify in its findings where the designation fell on the spectrum of


4
  Proof of continuous use of the mark in Indiana for the five years preceding the date the claim of
distinctiveness is made may constitute sufficient proof that a geographically descriptive mark has attained
secondary meaning. I.C. § 24-2-1-3. The mark at issue in this case clearly has not satisfied this threshold.
This does not, however, preclude its registration if there is evidence that the mark has actually achieved
secondary meaning within a shorter timeframe.
5
  Serenity also argues that to the extent the designation is protectable as a trademark, it has superior rights to
the mark because it was the first to use the mark in commerce. See Johnny Blastoff, Inc. v. Los Angeles Rams
Football Co., 188 F.3d 427 (7th Cir. 1999) (“The party who first appropriates the mark through use . . .
acquires superior rights to it.”). Because we resolve this matter based on the threshold issue of whether the
mark is subject to trademark protection in the first instance, we need not address this argument.


                                                       14
trademark distinctiveness; rather, the court found that the Bureau’s “trademarks were

distinctive at the time [Serenity] began using the mark and acquired the registration for the

domain name VISITMICHIGANCITYLAPORTE.COM.” Appellant’s Appendix at 11. The

court also concluded that “[t]he mark was properly certified for trademark.” Id.

       We first note that the designation in question is a geographic composite mark, that is,

“one composed of geographic matter coupled with additional matter (e.g. wording and/or a

design element).” U.S. Patent and Trademark Office, Trademark Manual of Examining

Procedure        §      1210.02(c)        (hereinafter       TMEP),         available       at

http://www.uspto.gov/trademarks/resources/TMEP_archives.jsp. Such marks are classified

based on their primary significance. Id.; see also I.C. § 24-2-1-3 (providing that marks that

are “primarily geographically descriptive” are not registerable unless they have acquired

distinctiveness (emphasis supplied)). The mark here consists of two geographic descriptors,

“Michigan City” and “LaPorte,” preceded by the word “Visit,” which, in the context of the

tourism industry, is at best descriptive. We have little difficulty accepting Serenity’s

argument that the designation is primarily geographically descriptive of the goods and

services with which it has been associated. See TMEP § 1210(c)(ii) (“[g]enerally, the

addition of a highly descriptive or generic term to the name of a geographic place does not

alter its primarily geographic significance”). Indeed, the purpose of the Bureau’s branding

efforts is to promote tourism in LaPorte County, and the only unifying characteristic shared

by all of the accommodations and attractions promoted by the Bureau is their geographic

location. It is difficult to conceive of a mark that falls more squarely within the category of


                                              15
geographically descriptive marks. Because we can conclude as a matter of law that

prospective purchasers are likely to understand the designation as describing the geographic

location of the goods and services the Bureau promotes, we conclude that the mark is

geographically descriptive. Accordingly, the mark must have acquired secondary meaning in

order to be protectable. 6

        The Bureau seems to suggest that its registration of the mark with the Secretary of

State is sufficient proof of distinctiveness and/or secondary meaning. We cannot agree that

registration is a substitute for evidence of the mark’s validity. The Indiana Trademark Act

provides that the Secretary of State shall cancel a trademark registration for a variety of

reasons, including when “a court of competent jurisdiction finds that . . . the registration was

granted improperly[.]” I.C. § 24-2-1-10 (West, Westlaw current through 2012 2nd Reg.

Sess.). Thus, the Act specifically contemplates that a court may review and overturn the

Secretary of State’s determination that a particular mark is registerable. Moreover, I.C. § 24-

2-1-5 provides that a certificate of registration issued by the Secretary of State “is admissible

in evidence as competent and sufficient proof of the registration of the mark in an action or

judicial proceeding in a court of Indiana.” (emphasis supplied). Thus, a certificate of

registration is proof of registration only, which is a necessary prerequisite to a suit for

infringement under the Indiana Trademark Act. I.C. § 24-2-1-14(a); Felsher v. Univ. of


6
 The Bureau suggests that its disclaimer of the terms “Michigan City” and “LaPorte” removes the composite
designation Visit Michigan City LaPorte from the category of geographically descriptive marks. We disagree.
The fact that the Bureau has disclaimed any exclusive right to use these geographic descriptors outside the
composite mark at issue in this appeal does nothing to alter our conclusion that the composite mark is itself
primarily geographically descriptive.


                                                     16
Evansville, 755 N.E.2d 589.                The Indiana Trademark Act contains no provisions

corresponding to 15 U.S.C.A. §§ 1057(b) and 1115(a), which provide that federal registration

of a mark constitutes prima facie evidence of its validity.

        Although the Indiana Trademark Act was intended to provide a system of state

trademark protection consistent with the Lanham Act, where, as here, the language of the

state legislation departs significantly from its federal counterpart, it is apparent that the

General Assembly intended a different result. We therefore conclude that the Bureau’s

registration of the mark with the Secretary of State under the Indiana Trademark Act is not

sufficient to establish its validity under the Indiana Trademark Act.7 Accordingly, to support

its infringement claims, the Bureau was required to present evidence to establish the validity

of the mark, including the existence of secondary meaning. See Keaton and Keaton v.

Keaton, 842 N.E.2d at 821 (“[i]n order to state a cognizable claim for trade name

infringement, a plaintiff must make a threshold showing of a protectable trade name”). 8




7
 To the extent the Bureau asserts a federal trademark claim, we note that there is no evidence that the mark
was registered on the USPTO’s principal register. Accordingly, the Bureau is not entitled to a presumption of
validity under the Lanham Act.
8
  The Bureau seems to suggest that in order to present the argument that the mark is not subject to protection as
a trademark, Serenity was required to file as a counterclaim an action to cancel the mark’s registration pursuant
to I.C. § 24-2-1-14.5 (West, Westlaw current through 2012 2nd Reg. Sess.). Although I.C. § 24-2-1-14.5
provides for a cause of action to cancel a mark registered under the Indiana Trademark Act, we can see no
basis for the conclusion that Serenity was required to do so in this case. Serenity has not sought cancellation of
the Bureau’s trademark. Rather, it has sought to defend against the Bureau’s claims of infringement by
arguing that the Bureau has not established an essential element of its claims, i.e., the existence of a protectable
trademark.


                                                        17
       Having concluded that the mark is geographically descriptive and not entitled to a

presumption of validity, we turn our attention to whether the mark was nevertheless

protectable, i.e., whether it had acquired secondary meaning. “The existence of secondary

meaning is a question of fact, with the burden of proof on the person claiming rights in the

name.” Id.; see also 2 McCarthy § 15:29. The rule applied by the majority of courts, and

which we adopt here, is that “the senior user must prove the existence of secondary meaning

in its mark just prior to the time and place that the junior user first began use of the mark.” 2

McCarthy §§ 15:4, 16:34.

       The trial court found that subsequent to the Bureau’s registration of the mark with the

Office of Secretary of State, “the trademark VISITMICHIGANCITYLAPORTE has come to

identify [the Bureau’s] goods and services and to distinguish them from the goods and

services of others.” Appellant’s Appendix at 10. Thus, to the extent the trial court concluded

that the mark had acquired secondary meaning, it is apparent that the trial court considered

the time period subsequent to Serenity’s first use. As described above, the proper question is

whether the mark acquired secondary meaning prior to Serenity’s first use.

       In the present case, the Bureau presented no evidence that the mark at issue acquired

secondary meaning before Serenity began using it. It is undisputed that Serenity purchased

the domain name visitmichigancitylaporte.com on September 9, 2009 and immediately began

using it to direct internet traffic to its main website on that date. The Bureau also claimed

September 9, 2009 as the date of its first use of the mark in its application for trademark

registration, and trial court found that the Bureau first used the mark in commerce on that


                                               18
date. Assuming arguendo that the trial court’s finding in this regard is supported by the

evidence, 9 the Bureau’s and Serenity’s first uses of the mark were virtually simultaneous.

Secondary meaning is acquired through actual use of a mark, and there is simply no evidence

in the record supporting a conclusion that the mark became associated with the Bureau in the

minds of consumers on September 9, 2009 in the hours prior to Serenity’s registration of the

domain name. Indeed, Jack Arnett, the Bureau’s executive director, testified that the Bureau

intended to begin using the mark following the September 9 announcement, and that securing

the domain names would have been the first step in that effort. Because Serenity had already

registered and begun using the visitmichigancitylaporte.com domain name by the time the

Bureau sought to do the same, it would appear that Serenity began using the mark first, and it

would therefore follow that the mark could not possibly have acquired a secondary

association with the Bureau prior to Serenity’s first use.

        In arguing that it is nevertheless entitled to trademark protection, the Bureau argues

that it made an investment in undertaking the branding study, registering the mark, and

attempting to defend the mark by issuing cease-and-desist letters. The Bureau argues that

trademark protection exists to protect such investments, and that Serenity made no

comparable investment in or attempt to protect the mark, and has even denied ownership

thereof.

9
 Serenity argues that the Bureau did not actually use the mark in commerce until well after September 9, 2009.
 According to Serenity, the Bureau merely announced an intention to use the mark on that date. We agree that
merely announcing an intention to use a trademark is insufficient to confer trademark rights. 2 McCarthy §
16:11. Rather, trademark priority is granted to the party who first uses the mark in commerce. Id.
Nevertheless, we need not sort out this particular dispute because we reach the same conclusion even if we
accept the trial court’s finding that the Bureau first used the mark on September 9, 2009.


                                                     19
        As an initial matter, we note that Serenity’s alleged denial of ownership of the mark

would be entirely consistent with its argument that the mark is not protectable as a trademark.

Additionally, we agree that trademarks exist, at least in part, to protect businesses’

investments in marks as a means to inform consumers about the source of the goods or

services they offer. See Kohler Co. v. Moen, Inc., 12 F.3d 632; see also 1 McCarthy, § 2:2.

This goal must be balanced, however, against competing concerns about depriving

competitors of the ability to effectively market similar goods and services by removing

descriptive terms from the public domain. See Blau Plumbing v. S.O.S. Fix-It, Inc., 781 F.2d

at 609 (“it is no purpose of trademark protection to allow a firm to prevent its competitors

from informing consumers about the attributes of the competitors’ brands”).                            The

distinctiveness requirement is designed to strike a balance between these concerns by

granting protection only when a mark is truly used to identify the source of goods or services,

rather than to describe the goods or services themselves (or their geographical location). The

Bureau’s initial investment in and subsequent efforts to defend the mark are simply not

relevant to whether the mark had acquired distinctiveness at the time of Serenity’s first use.10

        For all of these reasons, we conclude that the trial court’s findings that the designation

Visit Michigan City LaPorte was distinctive and properly registered as a trademark were

clearly erroneous. Because the Bureau failed to establish that the designation was protectable

as a trademark against Serenity, its claims of trademark infringement and cybersquatting

10
  These facts may be relevant, however, to the Bureau’s remaining claim of common-law unfair competition,
which is discussed further below. We also note that the trial court found that Serenity had made a number of
misrepresentations to the trial court concerning its ownership of the domain name at a pretrial. Serenity’s
initial denial that it owned the domain name might also be relevant to the Bureau’s remaining claims.

                                                    20
must necessarily fail. 11 Accordingly, we reverse and remand with instructions to the trial

court to vacate its judgment and enter judgment in Serenity’s favor on these claims.

        None of this is to say, however, that Serenity’s actions are necessarily beyond the

reach of the law. Although the trial court ruled only on the Bureau’s trademark infringement

and cybersquatting claims, the Bureau asserted additional claims, including a claim of

common-law unfair competition, which does not necessarily turn on the existence of a valid

and protectable trademark. See also Keaton and Keaton v. Keaton, 842 N.E.2d at 820

(noting that the law of unfair competition is very broad and not limited to passing off one’s

goods and services as those of another); Felsher v. Univ. of Evansville, 755 N.E.2d at 598

(noting that unfair competition does not refer to a tort with a specific number of elements, but

“‘instead describes a general category into which a number of new torts may be placed when

recognized by the courts. The category is open-ended, and nameless forms of unfair

competition may be recognized at any time for the protection of commercial values’”

(quoting W. Page Keeton, Prosser and Keeton on the Law of Torts, 105 (5th ed. 1984)).

Because these claims were not addressed by the trial court, we do not pass on their merits.

Instead, we remand with instructions to the trial court to consider the Bureau’s remaining

claims. Because this matter has already proceeded to a trial on the merits, however, the trial

court may not receive new evidence and must limit its consideration to the evidence and

claims already presented by the Bureau.


11
  Of course, this does not preclude the possibility that the mark could, in the future, become distinctive by
acquiring secondary meaning. In that event, the Bureau would be entitled to protection against unauthorized
use by others, provided their use began subsequent to the mark’s acquisition of secondary meaning.


                                                     21
                                                      2.

        On cross-appeal, the Bureau requests an award of appellate attorney fees. Under Ind.

App. Rule 66(E), “[t]he Court may assess damages if an appeal . . . is frivolous or in bad

faith. Damages shall be in the Court’s discretion and may include attorneys’ fees.” 12 Our

discretion to award attorney fees under App. R. 66(E) is limited to “instances when an appeal

is permeated with meritlessness, bad faith, frivolity, harassment, vexatiousness, or purpose of

delay.” Thacker v. Wentzel, 797 N.E.2d 342, 346 (Ind. Ct. App. 2003). Because Serenity has

prevailed on the merits of this appeal, an award of appellate attorney fees to the Bureau

would be inappropriate.

        Judgment reversed and remanded with instructions.

NAJAM, J., and BRADFORD, J., concur.




12
  In support of its request for appellate attorney fees, the Bureau cites the former Ind. Appellate Rule 15(G),
which is no longer a part of the appellate rules. Requests for appellate attorney fees are now governed by App.
R. 66(E).


                                                      22
