Union Organizers’ Activist/Gripe Sites Don’t Support Trademark Claims–Cintas v. Unite Here
By Eric Goldman
Cintas Corp. v. Unite Here, 2009 WL 604099 (S.D.N.Y. March 9, 2009). The Unite Here press release.
Cintas, a Fortune 500 company, manufactures uniforms. The defendants are unions and affiliated folks interested in unionizing Cintas’ workforce. This article indicates that the litigants don’t like each other.
To advance their objectives, the defendants set up several websites that critique/criticize Cintas, such as cintasexposed.org (targeting Cintas’ customers), uniformjustice.org (targeting Cintas’ employees) and notonmytrack.info (targeting NASCAR fans). The cintasexposed.org website contained a disclaimer and also linked (directly and indirectly) to some sites with commercial aspects.
Among other things, Cintas sued the defendants for trademark infringement, dilution and cybersquatting. the court grants the motion to dismiss all three claims.
For the trademark infringement claim, the court starts with a standard likelihood of confusion multi-factor analysis, but the factors just don’t work in a nominative/referential use situation like this. Unfortunately, the court doesn’t mention the nominative use doctrine, which would have facilitated an analytically clean dismissal. Nevertheless, the court gets on the referential track, saying “Defendants are not using the “CINTAS” mark as a “source identifier”, but rather solely to criticize Cintas’s corporate practices,” which negates any consumer confusion. The court dismisses the initial interest confusion argument because there was no evidence of intentional deception.
The trademark dilution claim fails for a lack of requisite use in commerce (this theory could have helped dismiss the trademark infringement claim too, but the court didn’t connect the dots). The court rejects the plaintiff’s efforts to do link-counting to linked websites where referred users might be able to transact, saying “The twice-removed links to a union “store” is at least one bridge too far and insufficient to establish the use of the CINTAS mark for profit.” (I severely criticize link-counting exercises from prior Internet trademark cases in this article). The cybersquatting claim similarly fails for lack of profit motive.