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Even if a plaintiff has a registered trademark, the trademark can be cancelled if it is found that the mark is not inherently distinctive and lacks secondary meaning.

American Express Marketing and Development Corp. and American Express Travel Related Services Co. Inc. (“American”) used a color coding system to help customers distinguish between the different kinds of credit cards American makes and from competing companies credit cards. Each kind of card color had different kinds of benefits, fees or other variations associated with it. In 1998 American developed a black card it ended up calling the Centurion, but in the process of choosing the name American rejected the name “Black Card”. Black Card LLC (“Black”) began developing an idea for a credit card it wanted to call “BlackCard” in 2005. Black had been informed that American had cancelled its application for the trademark name “Black Card” in 2007. Black registered “BlackCard” in 2009. In 2010 Black filed suit against American to have a declaratory judgment that Black’s use of “BlackCard” was not infringing on American’s registered trademarks. American showed by a preponderance of evidence that the mark was only descriptive and wasn’t protectable because it didn’t have secondary meaning. The court decided that Black’s mark should be cancelled because it lacked secondary meaning and was not inherently distinctive. The court GRANTED summary judgment to American.