Tag Archives: trademark

Tweet served as evidence of initial interest confusion in trade dress case

The maker of KIND bars sued the maker of Clif bars alleging that the packaging of the Clif MOJO bar infringes the trade dress used for KIND bars. Plaintiff moved for a preliminary injunction, but the court denied the motion. But in its analysis, the court considered the relevance of a Twitter user’s impression of the products. Plaintiff submitted a tweet as evidence in which a the user wrote, “I was about to pick up one of those [Clif MOJO bars] because I thought it was a Kind Bar at the vitamin shop ….” The court found that this type of initial interest confusion was actionable and therefore the tweet supported plaintiff’s argument.

KIND LLC v. Clif Bar & Company, 2014 WL 2619817 (S.D.N.Y. June 12, 2014)

Evan Brown is an attorney in Chicago, advising clients on matters dealing with trademark protection and enforcement, technology, the internet and new media. Contact him.

Fair use is a trademark concept as well

Ninth Circuit finds trademark fair use of name of online music site.

Webceleb is a “social marketplace for independent music.” It sued several defendants over the use of the term “web celeb” in connection with a television show award category and a section of an entertainment website. Defendants moved for summary judgment and the trial court granted the motion. Plaintiff sought review with the Ninth Circuit. On appeal, the court affirmed the award of summary judgment.

The court held that defendants’ use of the term “web celeb” was a classic fair use because:

  • the use of the mark was not a trademark use;
  • the use was fair and in good faith; and
  • the use was only descriptive

There was no trademark use because the term “web celeb” (at least according to the court) is “common parlance” for internet celebrities, which was what the award category was intended to recognize. And the use of “web celeb” in connection with the electronic magazine was merely descriptive of the online magazine’s content. The use was in good faith, as the evidence showed defendants were unaware of plaintiff’s mark when they created the “straightforward, descriptive title.”

The court came close to blaming the plaintiff for its own trademark woes:

Any minimal confusion here is the “risk the plaintiff accepted when it decided to identify its product with a mark that uses a well known descriptive phrase.” (Citing KP Permanent Make–Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 121–22 (2004))

That should serve as an instruction to all trademark adopters: While descriptive marks may do a good job of conveying information about a product, for the same reason the trademark owner may not enjoy as much protected exclusivity in the mark.

Webceleb, Inc. v. Procter & Gamble Co., 2014 WL 448648 (9th Cir. February 5, 2014)

No copyright protection for two word phrase

quipIn a final pretrial order, plaintiff stated that “to this day [defendant] persists in using [plaintiff's] copyrighted ‘usurpassed performance’ language on its packages.” Defendant filed a motion in limine (a motion to exclude evidence) to preclude plaintiff from introducing evidence or putting on testimony that would infer or suggest the phrase “unsurpassed performance” has been registered as a copyright.

The court granted the motion.

Under the Copyright Act, “[w]ords and short phrases such as names, titles, and slogans” are not subject to copyright. 37 C.F.R. § 202.1(a). The court looked to a number of cases in which short phrases had been denied copyright protection. For example, other courts had held that “Where Words Come Alive,” “Earth Protector,” “Chipper,” and “Retail Plus” were not copyrightable material.

One wonders whether plaintiff was really trying to assert some form of unfair competition or trademark infringement. The notion is worth entertaining for but a brief moment, till one realizes that laudatory phrases such as “unsurpassed performance” find no protection under trademark law either.

Predator International, Inc. v. Gamo Outdoor USA, Inc., 2014 WL 321069 (D.Colo. January 29, 2014)

The trademark and right of publicity woes of having a cryptocurrency named after you

Not too surprisingly, Kanye West’s lawyers have demanded the developers of the Coinye West cryptocurrency not use his name. The somewhat obnoxious letter shows that Kanye’s lawyers are asserting, among other things, trademark infringement and right of publicity misappropriation.

Russell Brandom at the Verge observes that “[o]nce the code is public, the original coders will be unable to prevent its use, forcing West’s legal team to prosecute every instance of Coinye individually.”

That observation raises a couple of interesting points. The first one is more of a clarification — once the code is in the wild, we should assume Kanye would only care to stop the use of his name, and would not seek (nor have any basis upon which) to stop anyone from using the code.

Stopping users of a cryptocurrency from using the name of that cryptocurrency could be a bit tough. Kanye’s lawyer threatens to “purse all legal remedies against any business that accepts the purported COINYE WEST currency.”

Infringement and misappropriation both depend on a use of the offending term in a commercial way. But users of the decentralized system, and the vendors who accept that currency, are not providers of any goods or services onto which Kanye’s identity will be attached. If one is merely using the currency as a tool, it’s hard to see how that’s any different from implicating the rights of the historical figures who appear on paper currency. So might it all be about the Benjamins? Maybe not at all.

Court considers Yelp posting as evidence of potential consumer confusion in trademark case

Posting by confused consumer was not hearsay.

You Fit, Inc. v. Pleasanton Fitness, LLC, 2013 WL 521784 (M.D.Fla. February 11, 2013)

In a trademark case between competing health clubs, the court considered a Yelp posting in entering a preliminary injunction, finding that while the anonymous posts were not conclusive evidence of actual confusion, they were indicative of potential consumer confusion.

The dispute centered over the use of “You Fit” and “Fit U” for health clubs. A Yelp user posted the following:

I am soo [sic] confused. I was a member at Youfit in [Arizona] and when I moved back to [California] I saw this place by my house and thought great my gym is here! When I went into the gym, I realized it was called Fit U. They use the same basic color scheme on their sign and the motto seemed the same. When I asked the girl at the desk, … [she] said her owner created this brand. I said what are you [ sic ] rates? Seemed very similar to me as when I was a member at Youfit. Very confusing and a big let down.

The court rejected defendant’s hearsay argument. It noted that affidavits and hearsay materials which would not be admissible evidence for a permanent injunction may be considered if the evidence is appropriate given the character and objectives of the injunctive proceeding. With no analysis as to why, the court found the Yelp posting appropriate to consider at this stage of the case.

Moreover, the court observed in a footnote that the Yelp post was not hearsay to begin with. It was not being offered to prove the truth of the matter asserted, but to demonstrate the consumer’s confusion — a then-existing mental state of the declarant, which is an exception to the hearsay rule. This is an interesting finding. The hearsay and non-hearsay uses of the post both turn on the same content, particularly the statement “I am soo [sic] confused.” That statement is the matter asserted (and in such capacity, excludable hearsay). And it is also the mindset of the declarant (and in such capacity, subject to an exception to the hearsay rule).

The court’s opinion does not address what one might see as the real problem with the Yelp evidence — its authenticity. Perhaps the parties did not bring that up. But one does not have to venture far in imagination to see how a crafty plaintiff could generate, or direct the generation, of self-serving social media content that would be helpful as evidence in a litigated matter.

See also: Customer reviews on social media provide important evidence in trademark dispute

Use of trademark in gripe site subdomain was not likely to cause confusion

Ascentive, LLC v. Opinion Corp., 2001 WL 6181452 (E.D.N.Y. December 13, 2011)

Plaintiffs sued gripe site pissedconsumer.com for trademark infringement and other forms of unfair competition. The court denied plaintiffs’ motion for preliminary injunction. It found, among other things, that defendants’ use of plaintiffs’ trademarks as subdomains (e.g., ascentive.pissedconsumer.com) was not likely to cause confusion.

The court looked to other cases where gripe site operators chose negative words to use in conjunction with the company being criticized. Over the years, gripe site operators have commonly chosen to add the word “sucks” to the target brand. For example, in Taubman Co. v. Webfeats, 319 F.3d 770 (6th Cir. 2003), the court held there was no trademark violation by the site taubmansucks.com.

Other “suck” parts of the URL have risen above the trademark infringement fray. A case from over a decade ago found that the web address compupix.com/ballysucks would not create a likelihood of confusion because no reasonable visitor to the site would assume it to come from the same source or think it to be affiliated with, connected with, or sponsored by Bally’s. Bally Total Fitness v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998).

And it’s not just that these brands purport to suck. In Taylor Building Corp. v. Benfield, 507 F.Supp.2d 832 (S.D. Ohio 2007), the court found that taylorhomesripoff.com, used in connection with a forum for criticizing plaintiff, did not create any likelihood of confusion.

In this case, the notion of being “pissed” joins a lexicon of permissible gripe site nomenclature (depending on the circumstances, of course). So says the court: “Like the word ‘sucks,’ the word ‘pissed’ has entered the vernacular as a word instinct with criticism and negativity. Thus, no reasonable visitor to the [offending pages] would assume the sites to be affiliated with [plaintiffs], and PissedConsumer’s use of plaintiffs’ marks in the various domain names at issue is not likely to cause confusion as to source.”

Aside: Good lawyering by my friend Ron Coleman for the defendants in this case.

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 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]

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.

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.