Category Archives: Trademarks

Customer reviews on social media provide important evidence in trademark dispute

Chipotle Mexican Grill, Inc. v. Chipotles Grill of Jonesboro, Inc., 2011 WL 2292357 (E.D. Ark. June 9, 2011)

The awesome burrito place Chipotle sued another restaurant that called itself Chipotles for trademark infringement. Plaintiff sought a preliminary injunction. The court granted the motion.

One of the most important factors in the court’s decision to grant injunctive relief was the plaintiff’s showing that it will likely succeed on the merits of the case. In a trademark infringement action, that analysis takes the form of the likelihood of confusion analysis.

Among the factors that a court should consider in determining whether there is a likelihood of confusion is whether there has been any actual confusion among members of the consuming public. In this case, the court found that the evidence plaintiff submitted of actual confusion was “substantial.”

In addition to a number of emails that customers had sent to plaintiff, the court looked to a couple of customer review sites — urbanspoon.com and Yahoo’s associatedcontent.com — each of which contained customer reviews that erroneously linked plaintiff and defendant. The court found this to constitute actual confusion, which could not be remedied even through reasonable care on the part of the consumers.

The case gives a good example of how companies (and their competitors) should be aware of how their brands appear in social media. Evidence of actual confusion is a powerful tool for a trademark plaintiff (and a potentially damning one for a trademark defendant). Smart companies will ensure they remain aware of how their marks and overall brand identity are being put forth, even off the beaten path on the web.

Evan Brown is a Chicago-based attorney practicing technology and intellectual property law. Send email to ebrown@internetcases.com, call (630) 362-7237, or follow on Twitter at @internetcases.

Court allows discovery of competitor’s keyword purchases

Scooter Store, Inc. v. Spinlife.com, LLC, 2011 WL 2160462 (S.D. Ohio June 1, 2011)

The Scooter Store and a related company sued a competitor for trademark infringement and other causes of action for unfair competition based in part on the competitor’s purchase of keywords such as “scooter store” and “your scooter store” to trigger sponsored advertisements on the web. Defendant moved for summary judgment and also moved for a protective order that would prevent it from having to turn over information to plaintiffs concerning defendant’s purchase of the keywords. The court denied the motion for protective order.

Defendant argued that it should not have to turn over the information because plaintiffs’ trademark claims based on those keywords were without merit, as the words are generic terms for the goods and services plaintiffs provide. Defendant also asserted a need to protect the commercially sensitive nature of information about its keyword purchases.

The court rejected defendant’s arguments, ordering that the discovery be allowed. It held that “whether or not [p]laintiffs’ claims involving these terms survive summary judgment [] has no bearing on whether the discovery [p]laintiffs seek is relevant, particularly viewed in light of a party’s broad rights to discovery under Rule 26.” As for protecting the sensitivity of the information, the court found that such interests could be protected through the process of designating the information confidential, and handled accordingly by the receiving party.

Court throws out Facebook’s lawsuit against Teachbook.com

Case dismissed because federal court in California did not have personal jurisdiction over Illinois resident.

Facebook, Inc. v. Teachbook.com, LLC, 2011 WL 1672464 (N.D.Cal. May 3, 2011)

Last year Facebook made us wonder if it had gone off its meds when it filed a trademark infringement lawsuit against Illinois-based Teachbook.com. More than one commentator thought Facebook was being overzealous in its efforts to claim exclusivity in the term “book” for social networking services.

However one contenances the action, the court has shut the cover on the first chapter. The U.S. District Court for the Northern District of California (where Facebook is located) held that it lacked personal jursidction over the Illinois defendant. So it dismissed the case.

Applying the well-known “effects test” from Calder v. Jones, the court found that Teachbook had not expressly aimed its conduct into California:

Teachbook does not register users in California. Thus, even if Teachbook intended to compete with a California company, it intended to compete for users who were not in California. The fact that an essentially passive Internet advertisement may be accessible in the plaintiff’s home state without “something more” is not enough to support personal jurisdiction in a trademark infringement suit brought in the plaintiff’s home state.

So if the fight continues, it won’t take place in Facebook’s back yard.

Court enters injunction against use of Twitter accounts in trademark case

Black Sheep Television, Ltd. v. Town of Islip, 2010 WL 4961669 (E.D.N.Y., December 6, 2010)

The Long Island Macarthur Airport is in a dispute with a company over that company’s alleged cybersquatting and the creation of websites that apparently a number of people have confused with the airport’s official marketing efforts. That company has also registered some Twitter accounts with usernames that incorporate the airport’s trademarks.

The airport has alleged trademark infringement and other similar claims against the company, and moved for a preliminary injunction. The court granted the motion, ordering (among other things) the Twitter accounts to remain in the ownership, custody, and control of the airport throughout the pendency of the litigation.

[Download the opinion]

Personal name in web search results did not support Lanham Act claim

Stayart v. Yahoo, — F.3d —, 2010 WL 3785147 (September 30, 2010)

Plaintiff performed a vanity search of her own name on Yahoo and found some results on porn and pharmaceutical sites. When Yahoo would not remove the search results upon plaintiff’s request, plaintiff sued under Section 43(a) of the Lanham Act. She claimed that the results showed a false endorsement by her of the pornographic and pharmaceutical sites.

Yahoo moved to dismiss, arguing that plaintiff was without standing to challenge this use of her personal name under Section 43(a). The district court granted the motion. Plaintiff sought review with the Seventh Circuit. On appeal, the court affirmed.

It held that plaintiff had failed to show she had a commercial interest in her name. Such interests are the only ones protectible under Section 43(a). Attempting to overcome this hurdle, plaintiff urged the court to consider her online activities such as writing “scholarly articles” and some poetry to be commercial services.

The court rejected this argument, noting that while those goals may be passionate and well intentioned, they are not commercial. Absent commercial activity, plaintiff lacked standing under the Lanham Act.

Other coverage of this case:

Trademark holder not entitled to domain name registered years before

Arizona State Trailer Sales, Inc. d/b/a Little Dealer Little Prices RV v. World Wide RV, No. FA1003001315658 (Nat’l Arb. Forum, May 7, 2010)

Startups in the process of selecting a company or product name are often frustrated to see that someone else, years ago, registered the .com version of their newly thought-of name. Similarly, companies that have acquired a trademark registration wonder whether they can use their crisp new registration certificate to stomp out someone else who has been using a domain name similar to the company’s new mark.

A recent case arising under the Uniform Domain Name Dispute Resolution Policy (UDRP for short) shows us that the earlier domain name registration is usually going to be on solid ground against a later-arriving trademark owner.

In the case of Arizona State Trailer Sales, Inc. d/b/a Little Dealer Little Prices RV v. World Wide RV, a National Arbitration Forum panelist denied the trademark owner’s cybersquatting claim against another company who had registered the domain name version of the trademark in 2006.

To be successful under the UDRP, the complainant would have had to show:

  • the domain name registered by the respondent was identical or confusingly similar to a trademark or service mark in which the complainint had rights;
  • the respondent had no rights or legitimate interests in respect of the domain name; and
  • the domain name had been registered and was being used in bad faith.

The complaint failed on the first of these three elements. The panel found that the requirement of being identical or confusingly similiar “necessarily implies that Complainant’s rights must predate the registration of Registrant’s domain name.” Since the domain name in this case was registered years before, there was no relief to be had. The request to transfer the domain name was denied.

UDRP loser did not commit fraud on USPTO by saying it was exclusive user of mark

Salu, Inc. v. Original Skin Store, Slip Copy, 2010 WL 1444617 (E.D.Cal. April 12, 2010)

This is kind of a wonky trademark/domain name case. So if that’s not in your wheelhouse, don’t strain yourself.

Plaintiff sued defendant for infringement of plaintiff’s registered trademark. Defendant moved for summary judgment, claiming that the asserted trademark registration was obtained by fraud on the United States Patent and Trademark Office. Specifically, defendant argued that plaintiff misrepresented when it told the USPTO that its SKINSTORE mark had “acquired distinctiveness” (i.e., was not merely descriptive of the goods and servcies) by means of “substantially exclusive” use in commerce.

The court denied the motion for summary judgment.

Defendant had argued that plaintiff committed fraud by saying its use was exclusive. It pointed to a case under the Uniform Domain Name Dispute Resolution Policy (UDRP) that the plaintiff had brought against the user of the domain name eskinstore.com. The WIPO panel in that case refused to find a clear case of cybersquatting.

In this case, defendant argued that plaintiff’s earlier unsuccessful UDRP challenge to a similar mark showed there were third parties using the mark and therefore the claim of exclusivity was fraudulent.

The court rejected this argument, noting that the plaintiff had undertaken significant efforts to protect its exclusive rights in the trademark. (It had sent out an astounding 300 cease and desist letters in the past couple of years alone!)

Moreover, and more importantly, the court noted that the WIPO panel hearing the UDRP complaint specifically declined to determine cybersquatting had occurred, finding it to be a question of infringement better addressed by the United States courts.

File extensions cannot be trademarks

Autodesk, Inc. v. Dassault Systemes Solidworks Corp., 2009 WL 5218009 (N.D. Cal. December 31, 2009)

One of the issues in the case of Autodesk, Inc. v. Dassault Systemes Solidworks was whether Autodesk could claim trademark rights and the letters “DWG”. The .dwg (“drawing”) file extension is the native file format for Autodesk’s flagship product AutoCAD.

File types

Plaintiff Autodesk moved for summary judgment on the trademark issue. The defendant pointed out that the trademark laws do not permit one to claim exclusive rights in trademarks that are merely functional.

During the hearing on the motion, the court asked Autodesk’s counsel to disavow any claim to trademark protection for the letters “DWG” when used for the file extension. Counsel did disavow such claim but held onto Autodesk’s argument that the letters could serve as a word mark to be used on packaging and advertising and marketing materials.

The Court agreed and sided with Autodesk and included in its order language that expressly stated “anyone in the world is free to use .dwg as a file extension as far as Autodesk is concerned.”

Autodesk filed a motion and asked the court to reconsider its holding, arguing that what Autodesk really meant when it disavowed the claim of exclusive rights was that anyone else could use the extension so long as the use was being made with Autodesk’s proprietary technology, or was interoperable with that technology.

The court rejected this argument holding:

File extensions are functional, and functional uses cannot be trademarked. To rule otherwise would invite a clog on commerce, given the millions of software applications. The limited universe of extension permutations would soon be encumbered with claimants and squatters purporting to own exclusive rights to file extensions.

The court went on to say there would be no consumer confusion because,

[T]he primary purpose of a file extension is to tell the computer the type of the file it is handling. A computer is not a consumer. Its “reading” of the file extension is not in connection with a commercial transaction. It doesn’t care who made the file format it is trying to read.

This isn’t the first time the question of whether machine perception of information has been held to not give rise to trademark protection. An analogous situation is the 1-800 Contacts v. WhenU decision in which the Second Circuit held that WhenU did not “use” another company’s trademarks within the meaning of the Lanham Act when it included trademarked terms in an unpublished directory that triggered delivery of contextually relevant advertising.

Court denies motion to dismiss AdWords trademark infringement case

FragranceNet.com, Inc. v. Les Parfums, Inc., — F.Supp.2d —, 2009 WL 4609268 (E.D.N.Y. December 8, 2009)

FragranceNet.com sells perfume online. It sued several of its competitors, claiming trademark infringement and other causes of action like unfair competition and unjust enrichment, over the defendants’ alleged purchase of variations of the term “fragrancenet” to trigger sponsored links on Google results pages. These sponsored links allegedly drove traffic to defendants’ websites.

The defendants moved to dismiss the complaint. Had this case been filed a year ago, the defendants may have argued that the case should be dismissed because the purchase of keywords to trigger sponsored links was not “use” of the marks. But in light of the Rescuecom decision from this past spring, defendants were constrained to argue differently.

They claimed that the case should be dismissed because the purchased keywords are generic terms and therefore not protectible as trademarks. The court rejected this argument, holding that it was inappropriate to determine whether the marks are generic at the motion to dismiss stage because plaintiff had adequately stated plausible trademark claims in its complaint. The question of genericness is better considered with some actual facts.

Photo courtesy Flickr user hslo under this Creative Commons license.

Cybersquatter hit with maximum penalty

Citigroup, Inc. v. Shui, 2009 WL 483145 (E.D. Va. Feb. 24, 2009)

Court enjoins use of citybank.org, orders defendant to pay $100,000 in statutory damages and to pay Citibank’s attorneys’ fees.

Defendant Shui registered the domain name citybank.org and established a site there promoting financial services, sometimes using the mark CITIBANK. The real Citibank, armed with its trademark registrations in over 200 countries and over 50 years of use of its CITIBANK mark, filed suit against Shui under the Anticybersquatting and Consumer Protection Act, 15 USC 1125(d) (“ACPA”).

Citibank moved for summary judgment on its ACPA claim and also asked the court to enter an injunction against Shui. Citibank also sought $100,000 — the maximum amount of statutory damages available under the ACPA, plus payment of Citibank’s attorneys’ fees. The court granted all of Citibank’s requested relief.

To prevail on the ACPA claim, Citibank had to show that (1) Shui had a bad faith intent to profit from using the domain name, and (2) that the domain name at issue was identical or confusingly similar to, or dilutive of, Citibank’s distinctive or famous mark.

Finding of bad faith

The court found Shui registered the domain name in bad faith because:

  • Shui did not have any trademark or other intellectual property rights in the domain name, and the registration of the domain name was not sufficient to establish any rights.
  • The domain name consisted of the legal name of Citibank (with one letter difference) and not the legal name of, nor any name that was otherwise used to identify Shui.
  • Shui had not engaged in prior use of the disputed domain name in connection with the bona fide offering of any goods or services prior to registering the domain name.
  • Shui’s use of the domain name was commercial in nature. Notably, some of the advertisements on Shui’s site were exact replicas of the marks CITIBANK and CITI. Each clickthrough provided Shui with advertising revenue, even though clicking on a link with Citibank in the title did not redirect the user to any website affiliated with the real Citibank.
  • Shui clearly intended to confuse, mislead and divert internet traffic from Citibank’s official website to his own in order to garner more clickthrough revenue from the misleading “citibank” advertisements.
  • Subsequent to the filing of the complaint, Shui sold the domain name for financial gain to a third-party in an apparent effort to avoid liability.
  • Shui registered other internet domain names which were identical or similar to Citibank’s marks, and the CITIBANK mark was distinctive and famous at the time Defendant registered the disputed domain name.

Confusing similarity

On the issue of confusing similarity, the court observed the strength of Citibank’s mark and the fact that the parties both offered financial services. Taking those facts in combination with the bad faith demonstrated by Shui, the court found the disputed domain name to be confusingly similar to Citibank’s marks.

The remedy

Accordingly, the court found in favor of Citibank on the ACPA claim. The court was stern in its remedy. It found that Shui’s registration of the confusingly similar domain name was “sufficiently willful, deliberate, and performed in bad faith to merit the maximum statutory award of $100,000 and an award of attorney’s fees.”

$100K photo courtesy Flickr user Ricardo (Kadinho) Villela under this Creative Commons license.