This case goes to show that defendants face extreme bars to getting attorney’s fees even in eyeroll-inducing cases.
Action Ink registered THE ULTIMATE FAN in 1985 for “promoting the goods
and/or services of others by conducting a contest at sporting events.” Action Ink worked with several NBA teams
between 1983 and 1987 to hold THE ULTIMATE FAN contests and promotions, but
other attempts to work on NBA promotions were unsuccessful, as were other
endeavors. In 1988, Action Ink’s
president wrote to Anheuser-Busch requesting that it stop using the phrase “THE
ULTIMATE CUBS FAN BUD MAN SEARCH.” Counsel for the Chicago Cubs didn’t agree,
arguing that the phrases were different and that “ultimate” was
descriptive. Action Ink submitted a
declaration of incontestability and renewed the registration at the appropriate
time.
In 1995, Action Ink learned that Major League Baseball was
considering holding an “Ultimate Fan” contest. After a C&D, the MLB agreed
to add language to its signs indicating that the phrase “Ultimate Fan” was
being used with Action Ink’s permission.
Action Ink sent over 60 C&Ds between 2006 and 2012; some of the
recipients agreed to stop using the phrase, and GEICO and the Louisiana Lottery
settled with Action Ink. After a C&D
about past uses, Tulane contributed tickets to a charity as payment and signed
a license agreement allowing it to use the mark from 2013-2014. No one else licensed the mark.
In 2009, Action Ink contacted three NFL teams about contests
it thought were infringing, and heard that Anheuser-Busch was responsible for
two of them. Action Ink sent a C&D
related to the “Bud Light©/ Washington Redskins Ultimate Fan Sweepstakes.” A-B responded asking for more information,
but nothing else happened. In 2011,
Action Ink discovered A-B’s use of the phrase “Ultimate Fan Experience” during
a Bud Light promotion advertised in supermarkets and in commercials aired
during NFL games. Action Ink sent a
C&D, to which A-B responded that it would neither C nor D since it wasn’t
infringing. In early 2012, Action Ink
sued; it filed a separate suit against the New York Jets in connection with the
Jets’ registration of ULTIMATE FAN in connection with computer games. In May 2013, the judge in the Jets case
granted summary judgment for the Jets on the ground that Action Ink had
abandoned the mark.
The court here found that collateral estoppel applied to bar
Action Ink’s claims against A-B, which were based on the same alleged
mark. Action Ink disputed the merits of
the Jets decision, but the correctness of the earlier decision is not an issue
in collateral estoppel.
In any event, Action Ink failed to show likely confusion.
Its theory was reverse confusion.
Despite the similarity of the marks and the “concepts” (services?), the
other factors favored A-B or couldn’t be assessed by the court for want of
evidence, entitling A-B to summary judgment.
The commercial strength of Action Ink’s mark was “quite
weak.” A-B showed that many companies
run “Ultimate Fan” promotions, including promotions held for sports fans. “This significantly lessens the likelihood
that the phrase, while known to the public, is associated with defendant
specifically.” The record showed dozens
of examples from Action Ink’s own discovery production, as well as 157 other
examples, including uses by the Los Angeles Angels, the Chicago Bulls, the New
England Patriots, and the Seattle Seahawks.
The over 60 C&Ds in a 6-year period also showed the prevalence of
the phrase. Action Ink, by contrast, had
no evidence of secondary meaning such as surveys or consumer testimonials. This favored A-B.
As a side note, the court pointed out that it wasn’t clear
that A-B was using the challenged term as a mark; all uses were accompanied by
BUD or BUD LIGHT, its own strong marks; the court nonetheless assumed for these
purposes that A-B was using the term as a service mark.
The court then evaluated A-B’s intent, and naturally there
was no evidence that A-B wanted to take advantage of Action Ink’s
goodwill. “Indeed, plaintiff has not
used the Mark in any recent public campaigns; this fact alone prevents the public
from associating the Mark with plaintiff.”
Given the widespread use of the term, there was no support for a finding
that A-B intended to “pirate” Action Ink’s goodwill. The 1988 letter didn’t serve to show A-B’s
awareness of the mark and subsequent bad faith, given the ten-year delay
between the notice and the current dispute and Action Ink’s lack of use of the
mark during that time.
Then, the court turned to the conceptual strength of the
mark. The pause to evaluate intent is
another indicator that conceptual and marketplace strength simply don’t play
well together. A-B argued that the mark
was descriptive without secondary meaning; Action Ink rejoined that
incontestability meant a conclusive presumption of nondescriptiveness/secondary
meaning. (This is already a weird
parsing of the law, but then again who really understands what incontestability
means for strength?) Assuming that the
mark hadn’t been abandoned, “the Court will accord the Mark nondescriptive
status.” Nonetheless, the mark was entitled
to “minimal” protection because it was at best suggestive, not fanciful or
arbitrary.
Digression: Given that courts regularly say that
“descriptive with secondary meaning” means “relatively strong,” and that
suggestive marks are “relatively weak,” are we developing a line of cases that
flips two entries on the Abercrombie spectrum,
so that it in practice goes suggestiveàdescriptive with
secondary meaningàarbitraryàfanciful
in terms of increasing (conceptual) strength?
That might make sense, especially given how little courts require to put
a mark in the category of “suggestive” instead of “descriptive.” Conceptual and
marketplace strength are supposed to be distinct, but a claimant needs some amount of marketplace strength to
claim a descriptive term as a mark, so there has to be some crossover and the
question is where to place a descriptive term that is in fact serving as a mark
on the Abercrombie spectrum. Hypothesis: if a trademark owner does the
minimum needed to show that the symbol it claims as a mark is in fact serving
as a mark, then just getting over the line “descriptive with secondary meaning”
makes the mark stronger than just getting over the line “suggestive.” Hmm … actually, that makes a fair amount of
sense, though I still balk at calling a mark that’s only been shown to be
descriptive with secondary meaning “relatively strong” without more.
Anyhow: THE ULTIMATE FAN is associated with a contest among
sports fans. “Ultimate” means “beyond
which it is impossible to go” and “greatest or highest possible; maximum;
utmost,” and it’s logical that an “ultimate fan” is either a big supporter or a
winner of a fan contest. The
relationship between the phrase and the service took the mark out of the
arbitrary/fanciful category, and thus it got less protection; this factor
didn’t favor Action Ink.
There was no evidence of actual confusion, which
“militate[d] strongly” against a finding of likely confusion. “Indeed, plaintiff's inability to produce any
evidence of actual confusion underscores the absence of its mark from the
public eye.” As for the other factors,
such as retail outlets, purchasers, or media used, they were impossible to
evaluate “because plaintiff has none to speak of for the Mark. … Plaintiff has
not been involved in a promotion using the Mark in almost twenty years. Thus,
there is no possibility that consumers have been unable to discern whether a
contest called ‘The Ultimate Fan’ originates from plaintiff or another company
because plaintiff has no public presence related to the Mark.”
A-B sought attorneys’ fees, which require bad faith. Though Action Ink abandoned the mark, its
claims weren’t so implausible as to necessitate an inference of bad faith.
Posts
No comments:
Post a Comment