Category Archives: Trademarks

No stay of action in PODFITNESS trademark case

Apple Computer, Inc. v. Podfitness, Inc., No. 06-5805, 2007 WL 1378020 (N.D. Cal. May 10, 2007) provides a service whereby users can download workout routines onto their iPods. When Podfitness filed trademark applications for PODFITNESS, PODFITNESS.COM, PODPOCKET, and PODWORKOUT with the United States Patent and Trademark Office, Apple filed notices of opposition with the Trademark Trial and Appeal Board (“TTAB”), seeking to prevent the marks from registering. Apple also filed a federal lawsuit against Podfitness, alleging that the company’s “entire marketing strategy appears to consist of hitching its wagon to Apple’s star.”

Defendant Podfitness moved to stay the proceedings pending the outcome of the oppositions before the TTAB. The court denied the motion to stay.

Podfitness provided two arguments why a stay would be appropriate. First, it argued that since the question of likelihood of confusion would be central to all of Apple’s claims, the court should wait to see how the TTAB rules on that point. Second, Podfitness claimed that Apple has initiated numerous other oppositions before the TTAB seeking to preclude others from registering trademarks containing word combinations which include the term “POD,” and therefore a stay would further the interests of judicial economy because the TTAB’s decision would comprehensively adjudicate Apple’s right to preclude others from using POD-formative marks.

In denying the motion for a stay, the court looked to the doctrine of “primary jurisdiction.” Under this doctrine, a court should stay proceedings which are properly within the jurisdiction of, and are in fact presently under consideration by, an agency with extensive regulatory powers over the subject matter and the parties involved.

Podfitness argued that a stay of the action pending the TTAB’s decision would promote a uniform and efficient adjudication of the parties’ rights, while, at the same time, avoiding the potential for inconsistent judicial determinations concerning Apple’s rights to preclude others from using POD-formative marks. Apple countered that since the TTAB’s decision would only determine the registrability of Podfitness’s marks, the Court would still have to adjudicate its claims for trademark infringement, dilution, false advertising and unfair competition regardless of the substance of the TTAB’s determinations. Accordingly, Apple argued, a stay would only serve to delay the resolution of the issues, perhaps for years.

The court agreed with Apple’s arguments, observing that the TTAB would be incapable of resolving all of the issues between the parties. Granting a stay would only serve to postpone resolution of the issues, forcing the court to eventually adjudicate what would inevitably be stale factual claims. And in the interim, Podfitness would be able to continue its allegedly infringing activity unfettered.

So the benefit of prompt adjudication won out.

E.D.N.Y. holds purchase of competitor’s trademark to trigger sponsored listing not trademark “use” under Lanham Act

Site Pro-1 v. Better Metal, LLC, No. 06-6508 (E.D.N.Y. May 9, 2007)

Site Pro-1 sued its competitor Better Metal, LLC, accusing Better Metal of committing trademark infringement when it purchased the terms “site,” “pro,” and “1” to trigger sponsored links on Yahoo! The facts of the case were “straightforward and not in dispute”: the mark SITE PRO-1 did not appear in the sponsored search results linking to Better Metal’s website.

Better metal moved to dismiss the complaint under FRCP 12(b)(6). The court granted the motion.

Relying heavily on the cases of 1-800 Contacts v. When-U, 414 F.3d 400 (2d Cir. 2005), Merck & Co., v. Mediplan Health Consulting, Inc., 425 F.Supp.2d 402 (S.D.N.Y. 2006), and Rescuecom Corp. v. Google, Inc., 456 F.Supp.2d 393 (N.D.N.Y. 2006), the court held that the internal use of the plaintiff’s mark to trigger the sponsored listings was not “use” as provided under the Lanham Act. The key question was “whether the defendant placed plaintiff’s trademark on any goods, displays, containers, or advertisements, or used plaintiff’s trademark in any way that indicate[d] source or origin.” Because the court answered that question in the negative, Site Pro-1’s infringement claim failed.

Hat tip to Eric Goldman.

Denial of injunction against blogger affirmed

In late 2005, a blogger named Smith posted an entry in which he was critical of an eBay listing company he’d had dealings with. In the post, Smith used the listing company’s logo several times. The company sued in federal court, alleging, among other things, trademark dilution. The trial court denied a motion for preliminary injunction against Smith, holding that the way in which he’d used the mark was merely for news reporting and commentary, and thus not actionable under trademark law. [Read Eric Goldman’s summary of the lower court proceedings here.]

On March 6, the Fourth Circuit affirmed the lower court’s denial of the preliminary injunction. With little substantive analysis other than to recite the factors appropriate for a court to consider in granting injunctive relief, the court held that the trial court did not abuse its discretion. So in this case, the blogger remains victorious.

BidZirk, LLC v. Smith, (Slip Op.), 2007 WL 664302 (4th Cir. March 6, 2007)

Trademark infringement analysis: the web is not just one channel of trade

In any trademark infringement suit, a successful plaintiff has to show, among other things, that the use of the defendant’s mark is likely to cause confusion as to the origin of the plaintiff’s goods or services. The various federal courts across the United States apply a number of different factors to determine whether the use of a mark is likely to cause confusion with a previously-existing mark.

In just about every iteration of this analysis, one of the factors a court will consider is the channels of trade in which the goods or services bearing the plaintiff and defendant’s marks are distributed. If products are distributed in the same channels of trade, confusion is more likely.

So what about products sold over the Internet? Does the fact that the products of both parties in a trademark infringement suit are available online automatically mean that they are in the same channel of trade? The recent case of Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, from the U.S. District Court for the Eastern District of Virginia, addressed that question. And the answer appears to be no.

In the Louis Vuitton case, the fact that the plaintiff’s luxury accessories (bearing the mark LOUIS VUITTON) and the defendant’s pet products (bearing the mark CHEWY VUITON) were both available online, did not “by itself . . . imply that the same trade channels were used for the purposes of determining likely customer confusion.” Looking to the case of Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623, 633 (6th Cir. 2002), the court held that some other factors were also to be considered, such as whether both parties use the Internet as a substantial marketing and advertising channel, whether the parties’ marks are utilized in conjunction with web-based products, and whether the parties’ marketing channels overlap in any other way.

Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, (Slip Op.) No. 06-321, 2006 WL 3182468 (E.D. Va., Nov. 3, 2006).

A review of the Rescuecom case: AdWords trademark infringement suit dismissed

Plaintiff Rescuecom, a computer services business, filed suit against Google, claiming that the search engine infringed its trademark by suggesting and selling the registered mark RESCUECOM as a keyword to competitors advertising through Google’s AdWords program. Google moved to dismiss for failure to state a claim, arguing that Rescuecom had not adequately alleged that Google’s sale of the keyword and triggering of ads was an actionable trademark use under the Lanham Act, 15 U.S.C. 1051 et seq.

The court agreed with Google and dismissed the case.

The court first looked to the Lanham Act for the elements of a trademark infringement claim. Under the Act, infringement occurs when (1) a defendant uses a plaintiff’s valid and protectible mark in commerce, without the plaintiff’s consent, in connection with the sale or advertising of goods or services, and (2) that use is likely to cause confusion as to the source of those goods or services.

The court observed that the Second Circuit has not decided whether the sale of a trademarked keyword for advertising purposes constitutes trademark infringement. It noted, however, eight recent decisions indicating a split among district courts over the issue of trademark use in the sponsored listing context.

Rescuecom offered four arguments as to why Google’s suggestion and sale of RESCUECOM as a keyword was trademark “use” under the Lanham Act. First, Google was free-riding on the good will associated with the trademark. Second, Google lured searchers away from the Rescuecom website. Third, the keyword’s use by competitors altered search results, causing confusion. Fourth, Google used “Rescuecom” internally as a keyword to trigger competitor’s advertisements.

The court addressed Rescuecom’s good will argument first, and found that Rescuecom’s allegations could not support improper trademark use by Google. Although the allegation of use of the mark “in commerce” could be supported, the court gave a nod to the decisions in 1-800 Contacts v. WhenU, 414 F.3d 400 (2d Cir. 2005) and Merck v. Mediplan Health Consulting, 425 F.Supp.2d 402 (S.D.N.Y. 2006) to hold the subtle point that commercial use is not the same as “use in commerce” for trademark purposes. In the absence of an allegation of an improper trademark use, there could be no violation of the Lanham Act.

In addressing Rescuecom’s next argument – that Google lured searchers away from Rescuecom’s website – the court rejected the faulty premise that a trademark use occurs when a searcher clicks a sponsored link triggered by “Rescuecom” but the user is not led to the Rescuecom site. Critical to the court’s analysis in rejecting this argument was that Rescuecom had not alleged that any of the sponsored links, besides those leading to Rescuecom’s own site, displayed the RESCUECOM mark.

The court also rejected Rescuecom’s next argument, that Google caused confusion via altered search results. Similar to its analysis for the previous argument, the court found that because searchers could still find Rescuecom’s website in the search results, and because none of the sponsored links displayed Rescuecom’s trademark, there was no infringing use by Google.

Rescuecom’s final argument, namely, that Google’s internal use of the mark to trigger ads was infringing also failed. Where Google did not place the RESCUECOM mark on any “goods, containers, displays, or advertisements” and where Google’s “use” of the mark was not visible to the public, there was no cognizable trademark use under the Lanham Act.

Because Rescuecom had not adequately alleged that Google’s actions constituted a trademark “use,” the court dismissed the federal trademark infringement, false designation of origin and dilution claims. The court refused to exercise supplemental jurisdiction over the remaining state law claims.

Rescuecom Corp. v. Google, Inc., 2006 WL 2811711 (N.D.N.Y., Sept. 28, 2006).

Trademark dilution law about to change

Some time in the next few days President Bush is expected to sign the Trademark Dilution Revision Act of 2006. [Full text of the Act] Among other things, the Act essentially overrules a significant portion of the Supreme Court’s 2003 Moseley decision, which held that in order to be successful, a dilution plaintiff must allege and prove actual dilution of its mark. The Act provides that a plaintiff must show a mere likelihood of dilution to sustain a claim.

Inasmuch as lowering the standard to “likelihood of dilution” may assist plaintiffs with part of their case, the Act makes another aspect more difficult. Certain circuits (including the Seventh) currently hold that a plaintiff need only show that its mark is well-known among a defined segment of the population (e.g., Star Trek fans) in order to be famous for trademark dilution purposes. This is known as “niche market fame.” The Act does away with niche market fame by providing that “a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.”

Hat tip to John Welch for picking up on this legislation.

“Google” as trademark takes a step toward “genericide”

Calvin (as in this Calvin, not this one) said “verbing weirds language.”

Yesterday the publishers of the Merriam-Webster dictionary announced that the word “google” has been added to the English lexicon as a verb, meaning “to use the Google search engine to obtain information . . . on the World Wide Web.” [Covered here on]

Surprisingly, a Google spokesman said that the listing is “appropriate.” Is it? Perhaps Google should be concerned that widespread acceptance of the word “google” as a verb could mean that the word is becoming generic — i.e., is becoming the very name of the service the company provides. Generic terms are not subject to trademark protection.

In the case of America Online, Inc. v. AT & T Corp., 243 F.3d 812 (4th Cir. 2001), the court held that the term “IM” was not subject to trademark protection because, among other things, AOL had used the term as a verb. The court also pointed to books, dictionaries, and glossaries defining “instant message” with the “IM” designation. (The court did not, however, find IM to be generic.)

Other case law also indicates Google shouldn’t think the inclusion is “appropriate.” The Seventh Circuit advises that “[a] serious trademark holder is assiduous in endeavoring to convince dictionary editors, magazine and newspaper editors, journalists and columnists, judges, and other lexicographically influential persons to avoid using his trademark to denote anything other than the trademarked good or service.” Illinois High School Ass’n. v. GTE Vantage, Inc., 99 F.3d 244 (7th Cir. 1996).

One redeeming quality of the definition is that “googling” is limited to using Google and not conducting searches in general. But perhaps Google’s domination of the search market makes it think that when someone talks of “conducting a search” (now a/k/a “googling”), he or she could not possibly be talking about using Yahoo!, MSN, or

Macabre result avoided in mortician domain name case

If a court won’t let you use your own name, you might feel like you’re a mere ghost of your former self. That happened to Ed Kalis of Broward County, Florida. In a recent case, Florida’s court of appeal considered whether a trial court’s order against Kalis, enjoining him from using his own last name in various means of advertising and in the URL for his company’s website, was proper.

The appellate court held that the injunction was overkill.

For many years, Kalis worked for Kalis Funeral Home, which his father started in 1959. The family sold the business in 1994, but the funeral home kept the Kalis name, and Kalis stayed on staff. In 2004, Kalis left and moved 100 yards down the street to start up a new “funeral, burial, cremation and mortuarial business.” The name for the new business was a dead ringer of the old one: Ed Kalis Memorial Services.

So you can see the problem here. The owner of the old funeral home was rightfully concerned that people were going to be confused when they saw two very similar businesses with very similar names just down the street from one another. So they filed suit.

Kalis changed the name of his new business to Edwards Cremation & Funeral Services, but the old funeral home still had a bone to pick. The old funeral home asked the court to stop Ed Kalis from listing himself as the licensed director of his new business on signs, in the Yellow Pages, and in the URL for his website.

The court’s opinion is only two pages, so there’s just a skeleton of analysis. It determined that the lower court had abused its discretion in prohibiting Kalis from using his actual name in connection with advertising and in the URL. That prohibition was overbroad.

So it sounds like the injunction was hardly the death knell for Kalis’s new enterprise.

Ed Kalis Memorial Servs., LLC v. McIntee Holdings, LLC, — So.2d —-, 2006 WL 1627131 (Fla.App. 4 Dist., June 14, 2006).

Court enjoins use of metatags in trademark infringement case

The recent case of Shainin II, LLC v. Allen is a straightforward metatag trademark infringement case. On May 15, 2006, Judge Pechman of the U.S. District Court for the Western District of Washington entered an order enjoining a former employee from using his former employer’s trademarks as metatags in a website promoting competing services.

Nodding to the well-known case of Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999), the court addressed the possibility of “initial interest confusion” arising from the wrongful diverting of web traffic to the defendant’s site. The court acknowledged, however, that use of another’s trademark as a metatag does not automatically mean trademark infringement. As in Playboy Enters., Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002), sometimes metatag trademark use is permissible “nominative use.”

But in this case, the plaintiffs had raised serious questions going to the merits of their trademark infringement claim. Moreover, the balance of the hardships weighed heavily in favor of the plaintiffs, as defendants would suffer little or no harm in being forced to remove the metatags. In fact, they had already done so by the time of the hearing. Accordingly, an injunction against further use of the trademarks in the metatags was appropriate.

Shainin II, LLC v. Allen, (Slip Op.) 2006 WL 1319405 (May 15, 2006).

Contrary ruling in sponsored link trademark case

The U.S. District Court for the District of Minnesota recently issued a substantive ruling on the issue of whether a company commits trademark infringement by purchasing its competitor’s trademarks as key words to generate sponsored listings on Google and Yahoo!.

In that case (Edina Realty v. the court held that such conduct constitutes “use in commerce” as defined by the Lanham Act, and ordered that the case proceed to trial on the question of likelihood of confusion (which is the sine qua non of trademark infringement).

On March 30, 2006, the U.S. District Court for the Southern District of New York issued a ruling that is contrary to the Edina Realty case. As usual, Professor Eric Goldman has all the details. This later case is called Merck v. Mediplan Health Consulting.

Simply stated, the point on which the Merck case is directly contrary to the Edina Realty case is on the question of whether purchasing a competitor’s trademark as a keyword constitutes use in commerce. While in Edina Realty the court held that this does constitute use in commerce, the court in Merck agreed with the defendants in holding that purchasing [the term] “ZOCOR” as a keyword on Internet search engines does not constitute trademark use.”

Merck v. Mediplan Health Consulting, (Slip Op.) — F.Supp —, 2006 WL 800756 (S.D. N.Y. March 30, 2006).