Thursday, March 07, 2013

Truth and consequences: "true fit" for apparel services descriptive, weak

True Fit Corp. v. True & Co., No. 12-11006-GAO (D. Mass. Mar. 4, 2013)

Overreaching occasionally leaves trademark plaintiffs worse off than when they started. Here, the district court invalidates a number of plaintiff’s registrations (though doesn’t direct their cancellation; presumably defendant could go ahead and seek that now) and leaves the remaining ones gasping for strength in the course of finding no likely confusion. (Also, this case is an example of descriptive marks sliding through the PTO on weak suggestiveness findings, and suggests why this is a bad idea for competition.)
True Fit sued True & Co. for trademark infringement, seeking to prevent any use of marks containing “true” in connection with personalized fit matching  software and services.  True Fit was founded in 2005 under the name True Apparel, providing software to help retail consumers find well-fitting jeans through In late 2009, True Apparel changed its name to True Fit and began operating, which offered a substantially identical service.  In 2011, True Fit stopped its direct-to-consumer operations and began providing services through e-commerce retail partners such as Macy’s and Nordstrom, launching its first partner service in October 2011 (Macy’s Denim Finder) and adding Nordstrom in March 2012.  Macy’s and Nordstrom invite their customers to create a TRUE FIT profile, which is then used to provide fitting information and ratings for various items of apparel.  
True & Co. was formed in fall 2011 as a new way to shop for bras from home.  After first trying Bra & Co., the company formally incorporated as True & Co. in March 2012 (it had previously registered and along with  In May, True Fit sent a C&D alleging that use of TRUEFIT, YOUR TRUE FIT, and other “TRUE-containing marks” was infringing.  True & Co. launched shortly thereafter, having removed TRUEFIT and YOUR TRUE FIT as a slogan but otherwise maintaining use of the word “true.” 

True Fit claimed to own many marks. The following had federal registrations: FIND YOUR TRUE FIT • TRUE FIT • TRUING UP • TRUED • TRUE TO YOU • SHOP TRUE TO YOU • BROWSE AND BUY. TRUE TO YOU.   The other alleged marks were unregistered: BE TRUE. SHARE TRUE. • TRUE UP • TRUE FIT BRAND ACCELERATOR • TRUE FIT RECOMMENDATION ENGINE • TRUE FIT SIZE • TRUE FIT SCORE • MY TRUE FIT.

True Fit argued that its marks were suggestive because imagination was required to draw a connection between “true” and True Fit’s personalized fit services.  No way:

This is like saying that the phrase “good food” is suggestive rather than descriptive, because it takes imagination to appreciate what it is the chef does to make the food taste good. The argument ignores the common meaning of “true” and its frequent use in conjunction with fitting and sizing. The phrase “true fit” describes what the plaintiff’s software does: it helps a person pick a garment that is the person’s best fit, that is, his or her “true” fit.

The marks are descriptive.  True Fit argued that the registered marks were accepted without a requirement of proving secondary meaning, entitling it to a presumption of inherent distinctiveness. The presumption of validity is only conclusive where a mark is incontestable; True & Co. could rebut the presumption by showing by a preponderance of the evidence that the marks were in fact descriptive. 

It did so with, among other things, examples of True Fit’s own use of the registered marks, particularly TRUE FIT, as descriptive terms, e.g., “truejeans is trying on hundreds of jeans for you, to find your true fit,” and “We are excited to help you find your true fit.” True & Co. also provided numerous examples of third parties using “true” or “true fit” in connection with fitting and sizing for many products, particularly apparel.  (I wonder if my beloved Zappos was included.)  True Fit argued that those examples weren’t relevant because they weren’t specifically related to personalized fit matching services.  Maybe no company “that provides fit matching services via an online questionnaire and a sophisticated algorithm” uses “true” as part of a mark. “But company after company has used the word ‘true’ and the phrase ‘true fit’ in conjunction with fitting and sizing. The word ‘true’ has become commonplace among both retailers and consumers when referring to fitting and sizing ….”  True & Co. showed that online shoppers routinely search for “true fit” or “true to size.”

Given that the marks were descriptive, they needed secondary meaning, which requires that “a significant quantity of the consuming public understand the name as referring exclusively to the appropriate party.” True Fit had no direct evidence of secondary meaning and relied instead on circumstantial evidence of “(1) the length and manner of its use, (2) the nature and extent of advertising and promotion of the mark and (3) the efforts made in the direction of promoting a conscious connection, in the public’s mind, between the name or mark and a particular product or venture.”

That wasn’t enough.  True Fit claimed to have been using TRUE marks since 2005 and invested significant resources into advertising and branding, and noted that Macy’s and Nordstrom have been promoting the TRUE marks to “thousands” of customers and say that various TRUE marks are True Fit’s intellectual property in their website terms of use.  This was weak evidence.  First, the only mark consistently in use since 2005 was FIND YOUR TRUE FIT.  At best, only TRUE FIT and TRUE TO YOU had additionally been used with any regularity and visibility.  “It is implausible that a significant portion of the relevant   consumer population would regard the use of BROWSE AND BUY. TRUE TO YOU. or TRUING UP as indication that True Fit Corporation was the source of the service provided.”  Macy’s and Nordstrom used only a few of the alleged marks: Macy’s only prominently displayed the three mentioned above, and Nordstrom only conspicuously displayed TRUE FIT.  True Fit’s claim to own a family of TRUE marks lacked evidence that the public associated not only individual marks, but the common characteristic of the family, with True Fit.  Thus, each mark had to be evaluated independently; True Fit didn’t own “true” for apparel fitting services.  Given this, the only marks with “any likelihood” of secondary meaning were FIND YOUR TRUE FIT, TRUE FIT, and TRUE TO YOU.  (Suggesting that even these might not ultimately be found to be protectable.)  The others weren’t marks.

On to likely confusion with our remaining trio, whose strength was at best weak.  The court didn’t buy True Fit’s claim to have invested heavily in its brand.  “It was not until late 2009 that True Fit changed its name from True Apparel and began using the phrase ‘true fit’ non-descriptively.”

Similarity is determined on the basis of the overall effect of the marks.  Here, the only similarity came from the word “true”; the total effects, including designs, fonts, and color schemes, were “substantially different.”  True Fit used a sans serif font, typically with a color scheme of dark gray, white, and red.  True & Co. used a “significantly different aesthetic,” with a design of intersecting geometrical shapes bordering and accenting “TRUE” in serif font. True Fit’s argument that the “dominant” portion of the marks was the (descriptive) word “true” was unpersuasive.

As for relatedness of the services in the minds of the public, the services were generally similar in that they “assist online shoppers in finding the right fit by filling out an online quiz that does not rely on measurements.”  But True Fit currently offered its services only for denim and selected other apparel, not lingerie, whereas True & Co.’s services were primarily for lingerie and incidentally for sleepware.  The differences minimized the likelihood that the public would see the services as related; True Fit’s intent to enter the lingerie market at some time in the future was of no aid to it.

In addition, True & Co.’s unconventional business model further distinguished it: customers choose three bras they want, and a stylist then chooses two additional bras; customers pay a refundable deposit, but are charged only for the items they keep.  By contrast, True Fit just did fitting, and Macy’s and Nordstrom took care of the rest of the transaction, “notably in a very ordinary manner. The novelty of True & Co.’s services limits the likelihood of confusion.”  Thus, the mere shared use of fitting technology would not make the services related in the public’s mind.

Both parties use the internet to provide their services, but so does everybody; this fact means little, if anything.  Anyway, True Fit’s software was only available through retailers’ websites, while True & Co. operated its own website.  Both companies advertised via the internet, magazines, and television, but True Fit primarily advertised to businesses (its paying customers), and True & Co. advertised only to consumers (its paying customers). Their messages and marketing strategies differed: True Fit focused on technology and innovation, while True & Co. promises a new bra shopping “experience.” 

The channels of trade were therefore also distinct—customers “often” use True Fit services because they chose Macy’s or Nordstrom, not because they have prior knowledge of True Fit.  Given the weakness of True Fit’s marks, “[i]t is highly likely that a consumer will use True Fit’s services unwittingly and come away with the understanding that Macy’s or Nordstrom is the source of the services..”  But it was “extremely unlikely” that a customer would end up at True & Co’s website unknowingly. 

The advertising was “substantially different,” particularly when considering the sophistication of the customers: primarily female online shoppers.  (Macy’s offered True Fit services for men’s denim, but True & Co. didn’t offer any services for men.)  In a footnote, the court elaborated that “women who shop online are likely to be more sophisticated and more aware of the nuances of marketing and e-commerce than the average consumer.”  They were likely to notice that True Fit was always advertised in conjunction with a major retailer, while True & Co. advertised only its own site. (NB: I saw this reported in the Electronic Commerce & Law Reporter as “women are more sophisticated than men.”  I think the court’s actual language is more nuanced.  I don’t know that I’m extra sophisticated when I shop for clothes online, but I do pay attention to the related questions of fit and of return policies.)

True Fit argued that the parties targeted exactly the same prospective purchasers.  This was “technically untrue”—True Fit sells only to businesses—but the ultimate consumers might be the same.  Though this factor favored True Fit, it didn’t help given the weight of the other factors.

True Fit submitted one instance of alleged initial interest confusion, a single call made by a non-customer; the court wasn’t impressed.  Likewise, the court didn’t find bad faith, even though True Fit alleged that True & Co. decided to change the company name only after visiting True Fit and Macy’s websites, and it launched its website a few weeks after receiving a C&D.  But the evidence showed that True & Co. registered and before it was aware of True Fit’s marks, and, while it attempted to remove all TRUEFIT references, it believed that its continued use of “true” was infringing.  The court agreed that True Fit failed to show that True & Co. intended to capitalize on True Fit’s reputation or goodwill.

Given the huge weight of the factors, confusion was unlikely.  And of course the other factors therefore didn’t support the grant of a preliminary injunction.  True Fit argued that it was suffering irreparable harm because True & Co. received negative press because of its failure to timely process orders after its initial launch in summer 2012.  But it didn’t provide evidence of ongoing negative reviews, and any injury sustained could be adequately compensated later.  Plus, a preliminary injunction would force True & Co. to completely rebrand, causing it significant injury and having an effect tantamount to a permanent injunction.  Though there’s a public interest in avoiding confusion, there’s also a public interest in free competition.

1 comment:

  1. Anonymous1:36 PM

    True & Co is most likely suffering hardships because of its deceptive practices. They give a consumer every reason to believe that they are allowed, even encouraged, to try on a bundle of items they will send you for 5 days after which you must send back or buy items as you wish. Only after you fall for this promise, you are then informed that if any item is removed from its packaging, you have to buy it whether it fits or not. The bras are not packaged, so you are allowed to actually try before you buy bras, but they offer panties, shorts and leggings in the same deal with the same allowance-- to try in on in your home and return what does not fit. This is a trap. It is a trick to get you to open a package, you believed you were allowed to do, without reading the fine print on the seal. Once a package is opened, you own the item. They have your credit card number. What's more, if you don't fill out the online report as to why you are returning each item, you will be stuck with a $20.00 shipping fee. If you don't return your unwanted items at the 5th day deadline for postmark, you own every pricey item they sent you to just "try-on" and too bad for you if it doesn't fit. Shameful business practice, True & Co. Shameful.