Rogers v. Wright, No. 04-1149, 2008 WL 857761 (S.D.N.Y. March 31, 2008)

The U.S. District Court for the Southern District of New York has issued a permanent injunction restricting the use of the service mark CHIC in connection with musical performances by two former members of the musical group of the same name.

Plaintiff Rogers (founder of the music group Chic) claimed that Defendants Wright and Martin (former Chic singers) infringed his rights in the service mark CHIC for music and vocal entertainment services. Rogers formed the group in 1977 and obtained service mark registrations for the band name in 1982 and 2004.

Wright and Martin, who previously performed on Chic albums and in live televised performances, had been performing in the U.S. and abroad since 2003. At various times, and without permission, they operated a Web site at www.ladiesofchic.com, and billed themselves as “First Ladies of Chic”, “Chic”, “The Original Ladies of Chic”, “Chic: Live!”, and “Les Chic”. They were billed by one venue as “original artists singing all the original hits.”

The court first found that Rogers had valid rights in the CHIC mark — regardless of whether those rights arose from the 1982 or 2004 registrations or from common law rights. The court then found a likelihood of confusion between Rogers’s mark and Wright and Martin’s use of the same using the 8-factor Polaroid test.

Specifically, the court found: (1) the CHIC mark was “at least moderately strong” in that it had created a tendency in the minds of consumers to associate it with Rogers’s band; (2) the defendants’ uses of the Chic mark (as noted above) were “sufficiently similar” to cause confusion; (3) the parties competed directly in the same market; (4) an analysis under “bridging-the-gap” was not required because of the third factor; (5) there was some evidence of actual confusion; (6) the defendants intended to take advantage of the plaintiff’s reputation and good will in adopting their various uses of his mark; (7) there was little evidence of the quality of defendant’s product; and, (8) similarly, there was little evidence of the sophistication of the relevant consumer group, i.e., concert attendees or promoters. Taking all of these factors together, the court found “little difficulty” in finding Defendants’ use of Plaintiff’s mark was likely to cause confusion.

The court was not persuaded by the defendants’ attempted fair use defense. The defendants had certainly used CHIC as a mark (and not, for example, mere comparative advertising or other descriptive purposes – see, e.g., Playboy Enters., Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002). Moreover, the defendants’ promotional materials used the CHIC mark in a prominent manner. The court was similarly unpersuaded by the defendant’s argument that the Lanham Act did not apply to acts outside of the U.S.

“Lowest perceptive capabilities.” Is that code for “a moron in a hurry“?

Chicago-based BlueAir, Inc. has apparently been getting some threats from Apple over BlueAir’s pending trademark registration for the mark AIRPOD, to be used in connection with desk top air purifiers. Apple says AIRPOD will infringe on the IPOD mark.

BlueAir has gone on the offensive, asking the U.S. District Court for the Northern District of Illinois to enter a declaratory judgment of no infringement.

The heart of BlueAir’s allegations are as follows:

“There is no reasonable likelihood of confusion, mistake, or error in the marketplace for persons of even the lowest perceptive capabilities who are seeking an iPod music player considering or buying an AIRPOD desktop air cleaner instead.”

This dispute has been going on for a few months, and it is interesting to see suit filed now, to essentially coincide with the introduction of the MacBook Air.

BlueAir, Inc. v. Apple, Inc., No. 08-427 (N.D. Ill. filed January 18, 2007)
[Download the Complaint]