2H 2019 and Q1 2020 Quick Links, Part 2 (Trademarks/Keywords)

* Workshopx Inc v. Build A Sign LLC , 2019 WL 5258056 (W.D. Texas June 26, 2019): “BAS contends that WorkshopX cannot state a claim for trademark infringement or unfair competition because using a competitor’s trademark as a Google AdWords keyword does not infringe the mark as a matter of settled law. BAS is generally correct that—in and of itself—using a competitor’s trademark as a Google AdWords keyword does not constitute trademark infringement.”

* Travelpass Group LLC v. Caesars Entertainment Corp., 2019 WL 4727425 (E.D. Tex. Sept. 27, 2019):

Prior to late 2016, Caesars never actively or aggressively attempted to restrain Plaintiffs’ branded keyword bidding. In November 2016, senior executives from Caesars joined the American Hotel and Lodging Association (“AHLA”) board of directors. After joining the AHLA board, Caesars actively enforced branded keyword restriction provisions, including cutting off Plaintiffs’ access to Caesars’ hotel inventory by March 2017. The Magistrate Judge concluded these facts, taken as true and viewed in the light most favorable to Plaintiff, state a claim for antitrust conspiracy against Caesars. The Court agrees—Caesars’ objections are without merit.

* Las Vegas Skydiving Adventures v. Groupon,  2019 WL 5454488 (D. Nev. Oct. 23, 2019):

Taking LV Skydiving’s allegations as true, LV Skydiving has plausibly alleged Groupon used LV Skydiving’s protected mark in its metadata to cause initial interest confusion by directing potential customers to offers to buy a skydiving service from other businesses associated with Groupon. While Groupon argues that any alleged metadata infringement would not be indexed by search engines to influence results and would not cause likely confusion, that involves issues of fact outside the complaint’s allegations. I therefore deny Groupon’s motion to dismiss LV Skydiving’s third cause of action for trademark infringement.

* Christian Care Ministry, Inc. v. Sureco Insurance Agency, Inc., 2020 WL 1674305 (M.D. Fla. Jan. 27, 2020): “There is sufficient evidence in the record that, in order to avoid customer confusion, to ensure that it maintained a prominent position online, and to capture the traffic of individuals that are looking for its branded trademark term, Plaintiff had to spend additional money on pay-per-click advertising than it would have spent absent Defendants’ alleged conduct. This is enough, at the summary judgment stage, to allow a claim for corrective advertising damages to proceed to trial.”

* Mid-Century Insurance Co. v. Hunt’s Plumbing & Mechanical LLC, 2019 WL 4464302 (W.D. Wash. Sept. 17, 2019): “Cyber Liability and Data Breach Response Coverage” insurance policy does not cover competitive keyword advertising lawsuit.

* Volkswagen AG v. IMAN365-USA, 2020 WL 977969 (N.D. Ill. Feb. 28, 2020):

Even if, hypothetically, the Defendant’s customers realize the true source of the goods before they complete their purchase, there is still a likelihood of initial-interest confusion. Initial-interest confusion “occurs when a customer is lured to a product by the similarity of the mark, even if the customer realizes the true source of the goods before the sale is consummated.” Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808, 812 (7th Cir. 2002). It inflicts harm by misappropriating the trademark owner’s goodwill. Considering that the marks used by the Defendant are identical to the AUDI Trademarks, initial-interest confusion is likely.

* Dish Network LLC v. Siddiqi, 2019 U.S.P.Q.2d 426738 (S.D.N.Y. 2019):

The undisputed record evidence demonstrates defendant’s liability for contributory trademark infringement as a matter of law.

The first element of contributory trademark infringement is satisfied, as defendant provided payment processing services to the callers. Indeed, the scheme was only half-complete once plaintiff’s subscribers were scammed by the callers. The second, critical part of the operation was remuneration.

To that end, defendant provided payment processing services through which the callers’ direct trademark infringement was actualized. Defendant and the callers exchanged hundreds of calls per month to manage the scheme, and defendant, using his bank and merchant accounts, processed hundreds of fraudulent payments procured by the callers.

The second requirement of contributory trademark infringement is also satisfied, as defendant either knew, or had reason to know, of the DISH marks infringement, and yet continued to process payments for the callers. First, defendant accepted and deposited hundreds of payments by mail or money order that referenced either (i) DISH or DISH NETWORK in the payee line, or (ii) DISH, DISH NETWORK, or DISH products and services in the memo/for fields of the payments.

Second, scores of credit card payments defendant processed using his merchant accounts were reversed for reasons including fraud. Defendant was aware of these chargebacks before, and certainly after, the account issuer closed his Global Communications merchant account and placed his name on its terminated merchant list. Undeterred by these obstacles, defendant opened a second merchant account—Global Business Company—in his wife’s name, to avoid detection and restore payment processing services to the callers.

Third, defendant continued to process payments from plaintiff’s subscribers after he was served with the complaint in this case, and even after the parties’ initial appearance before the Court in this matter.

For these reasons, defendant either knew, had reason to know, or was willfully blind to the fact that the callers were infringing plaintiff’s DISH marks, and yet continued to provide payment processing services for an infringing purpose. Accordingly, plaintiff is entitled to summary judgment on its contributory trademark infringement claim.

* Verbena Products v Pierre Fabre Dermo-Cosmetique USA, Inc., 1:19-cv-23616-RNS (S.D. Fla. Feb. 28, 2020). Because Beautyvice has not alleged that the takedown notice was disseminated to any customers, it has failed to state a claim for false advertising under the Lanham Act.

* There is a (mostly) heartwarming denouement to the PopeyesGate incident where Kitchen Dixie engaged in trademark reverse passing off of Popeyes Chicken. Featuring several shoutouts to the lawyers.

* Marketing Land: The secrets to bidding on brand terms on Amazon Advertising

* CircleID: Celebrating Twenty Years of the UDRP