1H 2019 Quick Links, Part 3 (Trademarks)

* Williams-Sonoma v. Amazon, Case No.18-cv-07548-EDL (N.D. Cal. May 2, 2019):

The first theory of infringement – that Amazon set up an unauthorized Williams-Sonoma website – is not plausible. The screenshots included in the complaint and/or attached as exhibits show that the Amazon logo and search bar are at the top of the product pages and the “Shop Williams-Sonoma” page prominently displays the Amazon logo, ask users to “Try Prime” (a wellknown Amazon service), and contain the phrase “Your Amazon.com” at the top. Under these circumstances, it is not plausible that consumers would be unaware that they were visiting an Amazon website and not a Williams-Sonoma website….

Nonetheless, drawing all inferences in favor of Williams-Sonoma as the Court must do at this stage, Amazon’s various alleged uses of the Williams-Sonoma Mark in combination plausibly suggest an affiliation with Williams-Sonoma that does not actually exist. It is a close call but on balance the allegations raise the plausible inference that Amazon is not merely reselling WilliamsSonoma products, but is instead cultivating the incorrect impression that these sales on amazon.com are authorized by Williams-Sonoma and that a reasonably prudent consumer is likely to be confused….

[In Amazon’s keyword ads,] The use of the term “Amazon Official Site” is arguably unnecessary to identify the site as Amazon’s since it is situated next to an amazon.com link and adjacent to several other Amazon or amazon.com references. Since the consumer is already on notice that the advertised link will take it to the official Amazon website, use of the term “Amazon Official Site” in the context of an advertisement for the sale of Williams-Sonoma products may plausibly suggest that Amazon has permission to sell those products….

While Amazon’s product listings do not display Williams-Sonoma’s product trademark or trade dress, the use of WilliamsSonoma’s pictures, as opposed to a reseller’s own pictures of the products, may plausibly suggest that Williams-Sonoma is involved in the product listings. Nothing on this centralized webpage explicitly informs consumers that Amazon does not have an official relationship with WilliamsSonoma or explains that the products are offered for sale by unauthorized third parties…

Since the item is already identified in the description as a Williams-Sonoma product, the inclusion of the “by WilliamsSonoma” link plausibly could imply that the product is sold by Williams-Sonoma or at least authorized by it for sale by Amazon. While the product page also states on the same page and in the same size and color font, albeit off to the right-hand side, that the item is “Sold by” an identified third party and “Fulfilled by Amazon,” the addition of these statements may still leave the consumer uncertain about the role of Williams-Sonoma in light of the “by Williams-Sonoma” statement in the product description and the otherwise official look of the product imagery and description of the product details, including “A Williams Sonoma exclusive.”

The allegations also plausibly support a claim that Amazon’s search engine advertisements and their use of the Mark generate initial interest confusion…. As alleged in the complaint, Amazon’s advertisements not only describe its affiliation with Williams-Sonoma in a potentially misleading fashion, but also divert consumers away from Williams-Sonoma’s authorized sales channels and toward Amazon’s website. …

Williams-Sonoma has alleged that Amazon provides inferior services, such as facilitating the sale and shipment of incomplete or broken items, thereby harming Williams-Sonoma’s reputation for high-quality services. This alleged conduct falls within the bounds of dilution by tarnishment. Thus, Williams-Sonoma’s allegations adequately state a claim for tarnishment.

* PlayNation Play Systems, Inc. v. Velex Corporation, 2019 WL 2180589 (11th Cir. May 21, 2019)

Velex argues that the two consumers calling the wrong phone number amounts to “initial interest confusion,” a doctrine we have not yet accepted as actionable under the Lanham Act. But Velex misunderstands initial interest confusion, which occurs when an alleged infringer pulls a sort of bait and switch. The infringer uses another’s trademark (or an imitation of it) to capture consumers’ initial interest, leading the consumers to the infringer’s website or call center, for example. But then the consumers, aware they are not actually dealing with the trademark holder, decide to purchase the infringer’s other good or service.That situation did not occur here. These were instances of source confusion. The consumers testified that they believed Gorilla Gym and Gorilla Playsets were produced by the same company.

* Vynamic, LLC v. Diebold Nixdorf, Inc., 2019 WL 193660 (E.D. Pa. Jan. 15, 2019)

Vynamic’s initial interest confusion theory is not well developed. At this point, the initial interest confusion argument is also speculative because the record contains no evidence of any initial interest confusion. Vynamic has merely noted that its customers and target customers attend trade shows where those companies might encounter Diebold’s Vynamic products. This is hypothetical. If Vynamic could produce affidavits or other evidence of initial interest confusion, so be it. The mere possibility of an already somewhat attenuated concept of confusion (in which a sophisticated customer is at first confused about the source of goods before it realizes that if it is going to spend significant sums on an important product, it should learn with whom it is dealing) is not enough to tip this Lapp factor in Plaintiff’s favor.

* Blue Water Innovations, LLC v. Fettig, 2019 WL 1904589 (S.D. Fla. March 8, 2019): “Plaintiff’s complaint includes allegations that “several clients have complained that the Vevazz device and system is substantially less expensive, and sells for approximately 10% less of the Blue Water device and system, as the Vevazz product is a cheaply made ‘knock-off.’ ” According to Blue Water’s own allegations, customers are able to identify the difference between the two products, so there is no evidence of confusion. This allegation is fatal to Blue Water’s position. See Id. (finding initial interest confusion unpersuasive where there was no evidence that customers purchased infringing product “in their confusion.”). Accordingly, Defendants’ motion to dismiss Count V is granted.”

* Platinum Properties Investor Network, Inc. v. Sells, 2019 WL 2247544 (S.D. Fla. April 11, 2019):

Some federal circuits have determined that the initial confusion theory is actionable. See, e.g., Promatek Industries, Ltd. v. Equitrac Corp., 300 F.3d 808 (7th Cir. 2002); Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999). Although the Eleventh Circuit has not determined whether initial interest confusion alone can supply the predicate for a Lanham Act claim, it has broadly recognized that liability for trademark infringement can arise where a defendant’s misuse of a mark causes confusion indirectly or suggestively. See, e.g., N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1216 (11th Cir. 2008) (holding that the use of a trademark in hidden metatags intended to influence internet search engines could be the basis of a trademark infringement claim based on “source” confusion where competitor caused search results to display offending trademark in description of its own website). Based on Axiom, Promatek, and Brookfield, the undersigned concludes that a financial injury that results from an indirect or suggestive use of a trademark may supply the necessary predicate for a Lanham Act claim.

* 3Lions Publishing, Inc. v. Interactive Media Corp., 2019 WL 2423419 (M.D. Fla. June 10, 2019):

3LP’s Complaint alleges IMC utilized 3LP’s trademarked phrase “HIPAA Survival Guide” within a blog post on its website, thereby committing the intentionally tortious act of trademark infringement. In support, 3LP attaches a copy of IMC’s blog post at https://store.kanguru.com/blogs/archives/6818326-hipaa-survival-guide. 3LP is a Florida corporation with its principal place of business located within Florida.

As such, the Court can reasonably infer that the webpage containing the blog post was accessed within Florida by at least one person or entity — 3LP. Further, 3LP argues — and IMC does not dispute — that IMC has made sales, however small or insignificant, through its website to persons or entities located in Florida. IMC’s own founder and president states that “[a] direct sale of IMC’s products through its website to persons or entities located in Florida would be insubstantial and isolated.” Although IMC downplays the number of sales in Florida, the Court draws the reasonable inference that IMC’s website — and the offending blog post in particular — was also accessed within Florida by persons and entities other than 3LP.

Therefore, the Court finds 3LP has met its burden of establishing personal jurisdiction over IMC under Florida’s long-arm statute….

It is not clear on the face of the Complaint that IMC’s usage of “HIPAA Survival Guide” constitutes fair use given that the blog post’s title included the same phrase trademarked by 3LP and within the context of IMC promoting its products. Therefore, the Court declines to dismiss the Complaint based on IMC’s fair use affirmative defense and denies the Motion.