Monday, April 27, 2015

Court makes the write choice on descriptive fair use

Marketquest Group, Inc. v. BIC Corp., No. 11-cv-618 BAS (S.D. Cal. Apr. 17, 2015)
Marketquest website using All In One and The Write Choice marks
Marketquest sued BIC for infringing its registrations for ALL-IN-ONE and THE WRITE CHOICE for, among other things, pens.  BIC included “The Write Pen Choice” in online advertising and displays for writing instruments, including its pens, in 2010. The ads included BIC ® and ROUND STIC ® at the top of the page, followed by “The WRITE Pen Choice for 30 years!,” unaccompanied by either TM or ®.  A BIC subsidiary that sells promotional products, Norwood, included the phrase "All in ONE" on its 2011 product catalogue. Norwood ® was printed in a larger font on the cover of the catalogue, and “All in ONE” appeared below and to the right of it.
Bic write choice ad
The court initially determined that these uses had “some likelihood of confusion” and the “potential” for infringement and the case proceeded to summary judgment, which BIC then won on fair use.  Fair use requires descriptive use, other than as a mark, fairly and in good faith only to describe the defendant’s goods or services.  Some possibility of confusion is compatible with fair use, since the existence of the defense reflects “the undesirability of allowing anyone to obtain a complete monopoly on use of a descriptive term simply by grabbing it first.”  The Ninth Circuit has said that the degree of consumer confusion remains a factor, along with “the strength of the trademark, the descriptive nature of the term for the product or service being offered by [the plaintiff] and the availability of alternate descriptive terms, the extent of the use of the term prior to the registration of the trademark, and any differences among the times and contexts in which [the plaintiff] has used the term.”  (Follow along and see how many of these the court considers—which says more about the undesirability of the Ninth Circuit’s laundry list than the quality of the district court’s analysis here.)
As for “All in ONE,” the court found that it had the meaning “an entity or object which combines all the required or appropriate elements, items, or functions in one” for over 130 years.  All didn’t mean “everything,” but “everything appropriate.” Marketquest argued that “all in one” wasn’t descriptive because Norwood “produced other catalogs in addition to their `all in ONE' Catalog that year which featured their housemarks and sub-brands.”  So what?  “All in one” meant “appropriately consolidated.” “Trademark fair use is designed to protect uses of the plain meanings of common words, and semantic contortions cannot render Norwood's meaning or use uncommon.”
When a trademark owner claims a descriptive phrase, it accepts the risk that such marks are weak and that others will make descriptive fair use of them.  Norwood used the common meaning of “all in one,” other than as a mark.  The only remaining issue was BIC’s good faith.  Knowledge of the marks alone was not enough.  “While it is true that a larger corporation may not roll over a small corporation’s mark, any organization that imbues secondary meaning to common phrases assumes the risk that another organization in the same business sphere will use that phrase for its common meaning. Marketquest was on notice that its ALL-IN-ONE marks were, by their very nature, susceptible to such confusion.”  Marketquest also claimed that the use of both marks in the same year demonstrated bad faith, but use of two common descriptive phrases in “wide-ranging marketing materials” was also insufficient.
Plus, Norwood “largely mitigated the risk of confusion” by prominently printing its NORWOOD® mark in every location including the phrase. “Spatially, there is no implied association between the Norwood mark and the All in ONE descriptor. All in ONE is printed in a standard font, and it is followed by a list of generic types of items included in the catalog.” Several places in the catalog also explained the phrase’s context, including: “Our primary product resource, featuring all product lines in ONE catalog.” Norwood did “everything possible, short of an explicit disclaimer, to mitigate the risk of confusion,” and disclaimers aren’t required.
The “write pen choice” fared similarly.  There was no evidence of actual or potential confusion.  Marketquest argued that BIC’s use was suggestive, but “the ‘write choice’ is a trite pun, notable only for its obviousness.”  The words were used with conventional spacing (rather than something like WriteChoice) and did not denote a trademark use.  The court cited evidence that advertisers use puns in 10-40% of ads, because consumers feel pleasure when they solve an easily solved riddle, and they may transfer this positive affect to the product being advertised.  “This simplistic pun is directly related to BIC’s pen product, and ‘write’ is far more descriptive of a pen than of Marketquest’s general promotional products business. To preclude BIC from making this pun would effectively eliminate this avenue of commercial speech.”
BIC took similar measures to reduce the likelihood of confusion here, including modifying its promotion from “The WRITE choice for over 30 years!” to “The WRITE Pen Choice for 30 Years!” BIC also “rigorously” labeled its marks with ® or TM, and used only its house font to write the phrase. “While Marketquest often uses a nondescript cursive font for ‘the write choice’ logo, its failure to make a more distinctive mark is again an assumed risk.”  This was undisputedly good faith.
Marketquest also couldn’t suggest a viable alternative for the phrase.  Its suggestion of “the right choice” “eliminates any pun and begs readers to ask: ‘Why not use the obvious pun here?’”  Its problem, if any, was of its own making.

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