1H 2021 Quick Links, Part 1 (IP)

Trademarks and Domain Names

* Kid Car NY, LLC v. Kidmoto Techs. LLC, 2021 WL 466975 (S.D.N.Y. Feb. 9, 2021):  “At the motion to dismiss stage, Kidmoto has plausibly alleged more than just the purchase of a competitor’s mark as a search engine keyword standing alone. The Counterclaim alleges that Kid Car purchased “KIDMOTO” as keyword on Google and that by using ‘kid car’ in the resulting advertisement there is a likelihood of consumer confusion.”

* RVC Floor Decor, Ltd. v. Floor and Decor Outlets of America, Inc., 2021 WL 1163117 (E.D.N.Y. March 18, 2021)

The Google AdWords purchase too may not alone evidence bad faith. Defendant’s acquisition of the “Floor Decor” search term could simply reflect savvy business sense in the Information Age: it is self-explanatory why Defendant Floor & Decor purchased search terms for a permutation of its own tradename. And the Defendant’s failure to “negative keyword,” i.e., deactivate, the term “Floor Decor” from its AdWords could be viewed as a failure to self-flagellate – which does not entail bad faith. But New York’s common law unfair competition cause of action is “adaptable and capricious.” “It has been broadly been described as encompassing ‘any form of commercial immorality,’ or simply as ‘endeavoring to reap where (one) has not sown,’; it is ‘taking the skill, expenditures and labors of a competitor,’ and ‘misappropriati(ng) for the commercial advantage of one person … a benefit or “property” right belonging to another.’ ” It is not confined to Defendant’s decision to adopt its mark. And it is assessed not by viewing acts in isolation but upon the totality of the evidence, including their timing…

* Caraway Home, Inc. v. Pattern Brands, Inc., 2021 WL 1226156 (S.D.N.Y. April 1, 2021). “Caraway’s final three claims are for trademark infringement, unfair competition and false designation, and trademark dilution under the Lanham Act as a result of Defendant’s purchase of the Caraway Mark so as to advertise Equal Parts when consumers searched for the term ‘Caraway’ in Google’s search engine. Caraway has adequately pled trademark infringement with respect to these claims.”

* Snyder’s Lance, Inc. v. Frito-Lay North America, 2021 WL 2322931 (W.D.N.C. June 7, 2021). This is a long-running battle over whether the term “pretzel crisps” is generic. (Spoiler: after dozens of pages, the court says it is generic). Some interesting discussion on the use of Google and Twitter to determine genericness:

Plaintiffs also offered evidence of Google searches and social media mentions on Twitter to support their position that PRETZEL CRISPS is not generic. Specifically, Plaintiffs’ attorneys’ employee Mr. Lauzau (whose work and conclusions the Court criticized with respect to media references above) conducted a Google search for the term “pretzel crisps” in October 2018 that he alleges shows “based on my review of results” that 87 (90%) of the first 97 results “used the term PRETZEL CRISPS as a trademark or referred directly to Princeton Vanguard’s product.” With respect to Twitter, another of Plaintiffs’ law firm’s nonattorney staff members (Elliot Beaver) conducted a subjective review of social media mentions of “Pretzel Crisps” on Twitter from April 1, 2018 through October 24, 2018 and concluded that a majority of tweets (63%) “referenced the PRETZEL CRISPS brand in a non-generic fashion.”

However, the Court does not find either the Google search or the Twitter analysis persuasive on the issue of genericness. First, as discussed above, these searches have only a limited usefulness in establishing whether PRETZEL CRISPS is generic due to the more than a decade (and $50 million in advertising and marketing expenditures) that has passed since the challenged registration of the mark in 2005. Again, the repeated use of ordinary words cannot give a single company a proprietary right over those words, even if an association develops between the words and that company.

…the vast bulk of the Google search results simply identify websites of large companies offering PRETZEL CRISPS for sale. Again, there is no dispute that Plaintiffs have developed a very large business selling their pretzel product; however, the typical commercial sales efforts associated with that business – including the websites featured in the Plaintiffs’ Google search, do not reflect consumer perceptions of genericness….

merely referencing Plaintiffs or their hashtag does not necessarily make the use of “pretzel crisps” in a tweet a brand reference. As with the Google search results discussed above, use of the disputed product name in the normal course of business communications, here on Twitter, does not reveal whether or not a consumer understands the product name primarily as a brand or a type of goods. Instead, it just reflects consumer engagement with the product…

* Soter Technologies, LLC v. IP Video Corporation, 2021 WL 744511 (SDNY Feb. 26, 2021). A company used [competitortrademark].com to redirect to its website. The court says this may be a trademark violation, including because it could qualify as initial interest confusion.

* Archi’s Acres, Inc. v. Whole Foods Market Service, Inc., 2021 WL 424286 (S.D. Cal. Feb. 8, 2021):

Plaintiffs argue that Defendants have caused “initial interest confusion whereby consumers were seeking Plaintiffs’ products and were lured to Defendants’ stores, at which they were unable to purchase Plaintiffs’ products and instead purchased a product sold by Defendants.”

The Court finds that Plaintiffs have not alleged sufficient likelihood of confusion to survive Defendants’ Motion to Dismiss and instead only establish the mere possibility of diversion.

* Dent v. Lotto Sport Italia SpA, 2021 WL 242100 (D. Az. Jan. 25, 2021). Domain name owners awarded nearly a quarter-million for defeating a failed attempt at reverse domain name hijacking.


* Bell v. Eagle Mountain Saginaw Independent School District, 2021 WL 1151706 (N.D. Tex. March 26, 2021). A stinging rebuke against a serial copyright plaintiff’s lawsuit against a school district for tweeting a motivational statement. The court holds that the school district qualified for fair use and ordered the plaintiff to pay attorneys’ fees. Prior blog post on a Bell lawsuit.

* Fellner v. Travel 4 All Seasons, CV-19-01719-PHX-DJH (D. Ariz. Sept. 29, 2020):

Defendant did not reproduce the Article to attempt to gain a financial benefit to Plaintiff’s detriment or for any nefarious reason. Defendant simply thought that the topic of pickleball on cruise ships would be interesting to the relatively few readers who visited his website. There is no evidence to suggest that Defendant’s use of the material was anything other than fair

* Stebbins v. Polano, 2021 WL 2682339 (N.D. Cal. June 30, 2021): Dismissing a 512(f) claim: “Plaintiff alleges that Defendant’s Counter-Notice claiming fair use was false and frivolous, and that Defendant’s pattern of harassment suggests that Defendant’s video was meant to harass, not parody. However, the facts as alleged do not plausibly suggest that any misrepresentation in Defendant’s Counter-Notice was knowing. The allegations more plausibly suggest that Defendant believed his use of Plaintiff’s video was fair use, and that such a belief might have been reasonable.”

* Variety: Inside the Dirty Business of Hit Songwriting

* Vice: John Deere Promised Farmers It Would Make Tractors Easy to Repair. It Lied.


* Bloomberg Law: IBM’s Patent Income Slips as Companies Resist ‘Godfather’ Deals