Entries in likelihood of confusion (5)
A trademark registration can be a valuable asset.
This was borne out for an East Coast-based client I recently represented. It had a federal registration for its business name in connection with its business’ core offerings. It obtained the registration from the U.S. Patent and Trademark Office years before they came to me with their trademark infringement problem, so good for them for maximizing their rights in their mark.
Their efforts paid off. After they applied to register their mark, a Washington company started offering the same services in connection with a substantially identical name. The Washington company wrongly believed that because my client was located on the East Coast, there was neither harm nor foul in copying my client’s brand. The Washington company didn’t listen to reason, and the case ended up in court.
Fortunately, the court didn’t waste any time granting judgment for my client. It found that because my client had obtained a federal registration, it was presumed to be the exclusive, nationwide user of the mark in connection with the services listed on the registration. It entered a permanent injunction against the Washington company, the scope of which the parties expanded in settlement. This wouldn’t have happened if my client hadn’t registered its mark. Again, good for them!
This case shows the benefits of federal registration. A trademark owner can expand its localized rights by registering its mark. Doing so yields national rights against later adopters of marks that are likely to cause consumer confusion with the registered mark. If you’re a Seattle business owner and don’t care if someone in San Francisco, New York, or Miami adopts a trademark that is identical or close to yours in connection with similar goods or services, there’s no need to get a registration. But if that situation would bother you, your ticket to stopping it is getting a federal registration.
NEWSBOYS and NEW BOYZ:
Similar marks for bands, but no likelihood of confusion
Newsboys, Inc. v. Warner Music Inc., illustrates that similar marks paired with similar goods or services may not create a likelihood of confusion.
The secret is enough of a difference in the goods or services.
But plaintiff uses its mark in connection with Christian rock. And defendants use their mark in connection with hip-hop. What’s more, according to plaintiff’s complaint, defendants’ group sings “‘sexually-charged,’ ‘sexually-explicit’ lyrics.”
The Middle District of Tennessee found this difference was enough to grant the defendants’ motion to dismiss plaintiff’s complaint. The services were just too different as a matter of law for confusion to be likely.
“[G]iven the stark differences in Plaintiff’s ‘Christian-based music’ versus New Boyz’s ‘sexually-charged’ hip-hop music,” the court wrote, it is “implausible that ‘Newsboys’ and ‘New Boyz’ are likely to cause confusion in the marketplace” — despite plaintiff’s claimed evidence of actual confusion.
This finding is unusual. The court itself acknowledged that “dismissal for failure to state a claim upon which relief can be granted is appropriate in only the most extreme trademark infringement cases….”
The case cite is Newsboys, Inc. v. Warner Music Inc., No. 12-0678 (M.D. Tenn. April 19, 2013).
A couple weeks ago I had the good fortune to drop in on the IP-core class at the University of Washington School of Law. It’s a good mix of J.D. (regular) and L.LM. (graduate) law students focused on learning the fundamentals of intellectual property law.
The mission? Talk about the importance of the likelihood of confusion in trademark law. I also introduced parody in the context of likelihood of confusion.
Likelihood of confusion is a hugely important concept in trademark law. It’s the basis for a trademark infringement suit. It’s also a bar to getting a trademark registered or a reason to have an existing registration cancelled.
The slides from my presentation are below. It highlights the “likelihood of confusion” factors that courts use to determine whether ordinary consumers would probably think that goods or services come from Source A when they actually come from Source B. If a likelihood of confusion exists, courts can enjoin (prohibit) the junior user from using the trademark that is causing confusion with the senior mark, among other things.
Want a crash course? My slides are accessible below.
Yesterday’s post was about false advertising, which got me thinking…. What are things a competitor can’t do in competing with you to make a sale?
Here’s a quick rundown:
- It can’t create a likelihood of confusion with you, if you came first. This is the essence of trademark infringement. A later-adopter can’t come into your market with a name or brand that is likely, i.e., probable, to confuse consumers into thinking that its goods or services come from you, are approved by you, or are affiliated with you. It doesn’t matter if your trademark is registered, since trademark rights automatically arise from use. It doesn’t even matter if your competitor was innocent in creating the likelihood of confusion. If its brand, company name, product name, or other marketing tool tends to mislead customers into thinking your competitor’s goods or services come from you, you may be able to put a stop to it. Caveats exist, but this is where the inquiry starts.
- It can’t misrepresent its product or your product. The right to free speech isn’t unlimited. Just like you can’t yell “fire” in a crowded theater, your competitor can’t lie about the qualities of its product or make a false comparison to your products. That means Honda can say Toyota’s cars are wimpy (in its humble opinion), but it can’t say its cars get twice the gas mileage Toyotas get when that’s not true (since it’s a statement of fact that’s provably false).
- It can’t use your trademark in its domain name. This is cybersquatting. It means no one — regardless of whether they’re a competitor — can register your trademark (or a confusingly similar variation) as part of its domain name in the hopes of either ransoming the domain name to you or profiting from Web traffic that was meant for your site. The Lanham Act provides for statutory damages that begin at $1,000 and go up to $100,000 per infringing domain name, as well as an award of attorney’s fees. Again, there are caveats, but the Anticybersquatting Consumer Protection Act gives trademark owners a big stick to use against bad actors that hope to take wrongful advantage of your brand in their domain names.
- It can’t use your brand as a search engine keyword. Maybe. This is still up in the air. But the Central District of California last year slapped one law firm from buying its competitor’s trademark as a search engine keyword, finding its doing so constituted willful trademark infringement. The court doubled the trademark owner’s lost profits to $292k and awarded it attorney’s fees. See Binder v. Disability Group, Inc., 772 F. Supp. 2d 1172 (C.D. Cal. 2011). It’s still a gray area, but Binder might get traction. It’s certainly gotten some courts’ attention.
- Other things your competitor can’t do. If your brand is a household name, no one (competitor or not) can use it in a way that would tend to lessen the impact your brand has on consumers. That’s trademark dilution. If you manufacture goods, no one can put your trademark on goods that aren’t made by you. That’s counterfeiting. A competitor can’t say its goods — most commonly agricultural products — come from your special part of the world if they don’t. (This means a shellfish company can’t say its oysters come from pristine Penn Cove when they were grown in less favorable waters.) That’s a false designation of origin.
This list isn’t exhaustive, and there are a lot of gray areas. But hopefully this will help you put a label on your competitor’s bad acts when you know in your gut what they’re doing isn’t fair.
Plaintiff AR Pillow, Inc., makes pillows designed to reduce acid reflux in infants.
Defendant Annette Cottrell owns pollywogbaby.com, is a former distributor of plaintiff’s pillows, and sells pillows that compete with plaintiff’s pillows.
Plaintiff sued Ms. Cottrell for trademark infringement, unfair competition, and defamation arising out of her use of plaintiff’s AR PILLOW trademark on her Web site along with the statements that she had “chosen to discontinue the product” and that the plaintiff’s pillow requires babies to bend their legs, which AR Pillow claims is false.
Plaintiff moved for a temporary restraining order or preliminary injunction seeking to stop such use.
On March 13, Western District Judge Richard Jones denied the motion, finding AR Pillow was not likely to succeed on the merits of its trademark infringement claim. In short, the court found there wasn’t much in Ms. Cottrell’s Web site that was likely to cause confusion with plaintiff’s trademark.
For example, on the “actual confusion” likelihood of confusion factor, the court noted: “Here, plaintiffs argue that there is evidence that at least one customer was actually confused by defendant’s use of the mark on her website. Plaintiffs allege that they ‘received a call from a customer seeking to cancel an order from an AR Pillow from pollywogbaby.com.’ Nothing in this allegation suggests that the customer was confused. Rather, it suggests that she was not confused because she knew that AR Pillow was different than pollywogbaby.com. Receiving unfavorable information about a product is not the same as consumer confusion.”
The case cite is AR Pillow Inc. v. Cottrell, No. 11-1962 (W.D. Wash. March 13, 2012) (Jones, J.).