Seattle Trademark Lawyer

Last summer, The Comphy Co. sued Amazon.com, Inc., for using its trademarks on Amazon’s store platform even though company doesn’t do business with Amazon.

Comphy alleged that Amazon’s search engine makes it look like the luxury bedding maker offers products through Amazon and then diverts potential customers to bedding providers that do.

Comphy filed a motion for preliminary injunction in the U.S. District Court for the Western District of Washington seeking to put a stop to that practice. Among other things, it sought to enjoin Amazon from “[p]romoting, supporting or allowing third parties’ unauthorized use of the COMPHY trademark (or highly similar marks such as COMFY) to promote bedding, sheets, pillows and related products not made by or under the authority of The Comphy Co.”; and “[a]utomatically suggesting searches for “Comphy”, “Comphy Sheets”, “Comphy Company” and “Comfy Sheets” when users begin to type a first few letters of those marks.”

On March 12, the court denied Comphy’s motion. In doing so, it wrote: “This is not an easy decision. Many of Defendant’s actions toe exceedingly narrow legal and equitable lines. But, on the record presented by Plaintiff, there are simply too many pitfalls for the Court to map an equitable course.”

At the outset, the court noted that Amazon had stopped doing the things that Comphy had complained about. But since Amazon did not stipulate to a preliminary injunction, the court considered the motion on the merits.

Comphy persuaded the court with its evidence of actual consumer confusion:

“There is no question that Plaintiff presents evidence of actual confusion that is often compelling, including written reviews by verified purchasers,” the court wrote. “Defendant has little retort for the fact other than to point out that the evidence is only that a small percentage of purchasers indicate they were confused.”

However, based on the limited record presented, the court found it was not clear that Comphy had a protectable trademark in its name; that Amazon had been using a confusingly similar mark; and that irreparable harm was likely. Therefore, it concluded that preliminary relief was not appropriate.

The case cite is The Comphy Company v. Amazon.com, Inc., No. 18-1460 (W.D. Wash. March 12, 2019) (Martinez, J.).

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.).