Plaintiff Guthrie operates medical facilities, Defendant ContextMedia provides a digital network for advertiser (read: pharma)-sponsored medical information displayed on screens in doctors’ offices. Plaintiff operates in the Twin Tiers region, which is Southern New York and Northern Pennsylvania. Defendant operates in all 50 states. At the District Court level, Defendant was enjoined from doing business in the Twin Tiers region, but could continue to use its mark both outside the region and in its online activities (website and social media). Plaintiff appealed.
Second Circuit: The logos are ‘jaw droppingly similar.’ Droppingly is a word – I looked it up. No evidence that similarity between the logos was more than coincidental. Plaintiff demonstrated a probability of confusion.
However: the lower court performed the Dawn Donuts analysis incorrectly. The Dawn Donuts doctrine provides that a plainitff cannot obtain injunctive relief beyond the area where it has proven a likelihood of confusion (which can create strange fact patterns involving slow-to-expand regional plaintiffs and ‘remote junior users’).
Here, while Plaintiff operated facilities only within the area of the injunction, it demonstrated the present possibility of harm outside the region. For example, Plaintiff promoted its marks both to potentials donors and to potential hires nationwide. Plaintiff takes pains to signify its ‘impartiality’ which could be damaged if donors perceived an erroneous association with a pharma-sponsored content network. Furthermore – unlike the original Dawn Donuts plaintiff, this defendant did not establish that it was highly unlikely that Plaintiff would expand beyond its present region any time soon.
Case remanded to the district court to tailor a proper injunction taking these facts into account.
Bonus Discussion: Similarity analysis when marks in question are compound marks consisting of [similar logo] plus [differing word marks].
The New Jersey Turnpike Authority operates the Garden State Parkway. It owns a federal registration for its logo. There are rest stops on the Garden State, and people stop there and eat pizza. Defendant has two pizza restaurants in Florida, and aspires to be a franchisor for Jersey-themed restaurants. It uses a logo apparently based on the Garden State Parkway logo.
Which cheap joke should we go for: Someone is in one of Defendant’s restaurants and thinks “wow, how did I find myself in a rest area on the Garden State Parkway?” or “Why would Defendant think that rest areas on the Garden State Parkway was an association worth evoking?”
Regular readers of The Trademark Blog know that Gabbanelli Accordions & Imports is not to be trifled with.
The University of Florida is chomping mad. And Florida State is on the warpath. The focus of their aggression? High school athletic departments the universities believe are infringing upon their Gator and Seminole logos.
Last week, Florida sent letters to two schools in Palm Beach County – both nicknamed the Gators – informing them they must change their logos because of trademark violations.
In August, Florida State contacted Southeast High School in Bradenton – the Seminoles – for the same reason.
I agree with John at TTABlog. The Board’s decision that FIRESIDE GLOW is not confusingly similar to FIRESIDE WARMTH for identical goods, is surprising, and may be the result of ‘working the ref.’
Nicole Polizzi, TV’s SNOOKI, filed SN 77929985 for SNOOKI, covering books and class 41 ‘personal appearances.’ The appllication has now received a preliminary Section 2(d) refusal, citing reg 2844692 for ADVENTURES OF SNOOKY for a ‘series of children’s books.’ Coverage here.
Levi Strauss fiercely protects its ‘arcuate’ trademarks, the arch-like design on back pockets, etc. Revise Clothing received the registration above, received a demand letter from Levis, and now brings a declaratory judgement action.
Complaint Revise Vanilla Star Levis Arcuate Trademark
Sotheby’s has a real estate brokerage operation in addition to its famous auction house.
Complaint Sotheby Moving