Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. In a recent opinion from the Eleventh Circuit Court of Appeals, the Court affirmed the dismissal of a complaint for, among other things, trademark infringement where the plaintiff was unable to demonstrate that it owned protectable trademark rights. First, the Court noted the judicial notice taken by the district court of a trademark registration showing a third party has superior rights in the mark asserted by the plaintiff. Second, the Court affirmed the district court’s determination that the plaintiff had a descriptive mark (NATIONWIDE for moving services having a nationwide geographic scope), and that the plaintiff had not shown secondary meaning prior to the defendant’s commencement of use of its similar mark. The fact that the plaintiff did not seek a federal registration for many years after its initial use did not help its cause. As such, the appeals court affirmed that the plaintiff did not have a protectable interest in the mark. One additional point, that serves as something of a takeaway, is that the law applicable to motions to dismiss changed in 2007 with Bell Atlantic v. Twombly, and attempts to persuade a court with the older, looser standard will likely fail.
2. In a recent opinion from the Eighth Circuit Court of Appeals in a trademark case, the Court reversed a district court summary judgment ruling finding that the relevant consuming public was sophisticated such that a theory of infringement known as initial interest confusion did not apply (as well as a corresponding jury instruction limiting confusion to instances other than initial interest confusion. In the Eighth Circuit, the question of whether initial interest confusion (or pre-sale confusion) is viable was unclear. In this case, the Court decided that trademark laws, including as to the timing of the confusion in order for it to be actionable, was flexible such that initial interest confusion may be a viable claim in situations where the relevant consuming public is other than “professional purchasers.” In this particular case, involving Sleep Number beds, the Eighth Circuit also determined that a fact issue remained as to the sophistication of the relevant consuming public. Therefore, the district court was reversed and the matter is headed back to the district court. The takeaway here, when considering the viability of a claim as a potential plaintiff or defendant, is simply to have a relatively broad view as to time relative to a purchasing decision when considering whether or not consumer confusion may exist.
3. In a recent opinion from the Tenth Circuit Court of Appeals in another trademark case, the Court reversed a portion of a grant of summary judgment where the district court applied an incorrect standard for actual use of a trademark sufficient to develop ownership rights. In this case, the plaintiff claims to have originated a search engine and personal assistant E.R.I.C.A. prior to Bank of America’s filing of an intent-to-use (ITU) trademark application for its automated personal assistant “ERICA.” The district court found, among other things, that the plaintiff had not demonstrated sufficient use of his mark to develop ownership rights in it prior to BofA’s ITU application for its ERICA mark. The Tenth Circuit determined that the district court’s standard was too restrictive, particular for a service mark, by requirement actual sales that generated revenues. The Tenth Circuit vacated the summary judgment order and remanded on this issue. The takeaway here, particularly for service marks, is that the extent of use of a mark needed for establishing ownership is not negligible, but is not overly elevated, either.
