15
Jul/03

Defendant Too Much Like A VIRGIN


This is why you can never tell a client that you will definitely win. The District Court may display a ‘considerable misunderstanding’ of the likelihood of confusion analysis and you lose. 

Virgin Enterprises owns the famous VIRGIN mark which it uses on a wide range of goods and services, including electronic equipment megastores.  It also sells wireless service in other countries.  Defendants sold wireless phones and wireless service under the VIRGIN mark.  At the District Court level, Virgin LOST on the grounds that its rights did not extend to telecommunications services.  The fact that Virgin is already using the mark in connection with wireless services in some jurisdictions  suggests that wireless is within Virgin’s likely area of expansion here.

On appeal, the Second Circuit said “Of course there is a likelihood of confusion.”

Note to beginning trademark lawyers: this is why it is not the end of the world when you are not perfect:  Even a District Court Judge (and his clerks, who probably were on law review), can issue an opinion that the Circuit Court will state shows a considerable misunderstanding of the likelihood of confusion analysis.

Interesting aside:  Defendants had retained plaintiff’s long-time law firm for the opinion to clear possible marks, including VIRGIN. Defendant alleged that the law firm cleared the mark.  Virgin’s law firm entered an affidavit that it had refused to search the mark.  Virgin’s law firm wasn’t disqualified for a conflict of interest.  Defendant wasn’t reprimanded for making a false claim.  ???

Virgin Enterprises v. Nawab, et. al., 02-7491 11 (2d Cir. July 11, 2003).

 

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