2H 2022 Quick Links, Part 2 (Trademarks)

Trademark

* Illinois’ Fair Food and Retail Delivery Act: “A third-party delivery service may not purchase or use the name, likeness, registered trademark, or intellectual property belonging to a merchant, and may not take or arrange for the pickup or delivery of an order from a merchant through a digital network, without first obtaining written consent from the merchant.”

The statute defines merchants as any retailers (not just restaurants), so this statute seems to give all retailers categorical control over third-party pickup/delivery services? Compare Left Field Holdings v. Google LLC, 2022 WL 17072948 (N.D. Cal. Nov. 18, 2022).

Also, did the law ban delivery services from buying keyword ads based on the retailers’ trademarks?

* Tachias v. Los Lunas Schools Board of Education, 2022 WL 14008397 (D.N.M. Oct. 24, 2022):

Based on First Amendment jurisprudence, the hosting, content, and title of Plaintiffs’ Facebook page are protected activities under the First Amendment…. The content of the page included discussions about issues relating to the District. Topics of conversation ranged from innocuous to serious, encompassing posts about parents discussing their own children, snow days and school closures, the school calendar, criticisms and concerns regarding District employees, and allegations that a District principal threatened a student. As to the criticisms, concerns, and non-defamatory allegations relating to government employees, such speech is core protected activity under the First Amendment.

A title of a social media page—like that of a book or a movie— is speech subject to First Amendment protections…. Plaintiffs did not use the term “Los Lunas School” in connection with the sale of goods or services, but instead in connection with the expression of their views about the District.

* Aliign Activation Wear LLC v. Lululemon Athletica Canada, Inc., 2022 WL 3210698 (9th Cir. Aug. 9, 2022):

the district court correctly granted summary judgment to lululemon on AAW’s initial interest confusion theory. Because AAW focuses its arguments on appeal on initial interest confusion among Internet shoppers, it must demonstrate that “a reasonably prudent consumer accustomed to shopping online” would be confused by the Google results AAW relies upon. The Google searches show that when consumers search for “aliign pants” or “aliign yoga pants” online, they are provided with results that clearly indicate the products on the page are lululemon products. Such unambiguous labeling significantly reduces any confusion for the prudent consumer. The page also informs consumers that it is providing results with the word “align,” and allows consumers to search specifically for results with the word “aliign” if they wish. It is highly unlikely that any consumer searching for AAW’s products would be confused as to the source of the goods he or she encounters in search results given these circumstances.

* Atlas Biologicals, Inc. v. Kutrubes, 2022 WL 2840484 (10th Cir. July 21, 2022): “our cases reference “initial interest confusion” under the Lanham Act, where a seller can be held liable after hooking a consumer with a misrepresentation, even if the confusion fades before a sale is made.”

* Pocketbook Int’l SA v. Domain Admim/Sitetools, Inc., 2022 WL 2784820 (C.D. Cal. June 6, 2022): No initial interest confusion when the plaintiff’s trademark is included in the post-domain name URL.

* S&P Global Inc. v. S&P Data LLC, 2022 WL 3098096 (Aug. 4, 2022). Some instances of actual confusion are probative of initial interest confusion.

* Enchante Accessories, Inc. v. Turko Textiles, LLC, 2022 WL 5177808 (S.D.N.Y. July 15, 2022): “Plaintiff argues that the risk of initial interest confusion is particularly high with buyers who have previously purchased its products, a risk it contends is borne out by the alleged evidence of actual confusion among buyers. But in the cases cited by Plaintiff, courts found that there was a high degree of similarity between the marks and there was evidence of actual confusion, neither of which is true here.”

* Garrapata, LLC v. Norok Innovation, Inc., 2022 WL 4099470 (C.D. Cal. May 13, 2022). This is a default judgment. It’s 2022 and courts are still accepting IIC for keyword metatags:

Plaintiff alleges that Defendants have used the mark in commerce to sell CBD products without Plaintiff’s consent by using Mr. Eastwood’s name in hidden metatags. Finally, Plaintiff alleges facts sufficient to show Defendants create, at least, “initial interest confusion” for consumers by using Mr. Eastwood’s name in hidden metatags. Indeed, Plaintiff alleges that consumers are initially confused about whether Mr. Eastwood has endorsed the CBD products at issue here because search results for Mr. Eastwood’s name in connection with CBD products guides consumers to Defendants’ CBD marketplace which offers for sale CBD products. This is made plain by Plaintiff’s allegations and supporting evidence that a search on Defendants’ online marketplace for “CLINT EASTWOOD CBD PRODUCTS” produces results for 61 CBD items. And even if the consumer realizes that Mr. Eastwood does not actually endorse CBD products, the harm has been done. “Once the consumer’s attention is captured, the consumer might well realize that he or she has arrived at the defendant’s (and not the plaintiff’s website), and yet might stay there and purchase the defendant’s similar products.” Soilworks, LLC v. Midwest Indus. Supply, Inc., 575 F. Supp. 2d 1118, 1130 (D. Ariz. 2009) (internal quotes and citations omitted). “Although a sale procured in this manner does not ultimately result from the consumer’s confusion as to the source of the products, it is procured nonetheless through the defendant’s unfair use of the plaintiff’s trademark and associated goodwill.” Plaintiff therefore successfully states its trademark claims.

* A former Saint Xavier baseball coach “used the Twitter Account as a platform to criticize SXU’s reasons for terminating his employment. Such a use is not actionable under the Lanham Act.” This may sound obvious, but these lawsuits are endless.