reverse passing off still actionable as false advertising, court reminds us

OTR Wheel Engineering, Inc. v. West Worldwide Services, Inc., 2016 WL 236231, No. CV-14-085 (E.D. Wash. Jan. 20, 2016)

Interesting little case that doesn’t mention Dastar, but is a rare application of the Dastar principle that reverse passing off can be actionable as false advertising under appropriate circumstances, which these might be. Plaintiff alleged both trademark infringement and false advertising based on its contention that its Outrigger word mark was “buffed off” of test tires used by defendant in China. The court correctly granted reconsideration of its initial holding that this allegation raised a genuine issue of material fact as to infringement. The word mark was allegedly removed before the goods were shipped in commerce (which wouldn’t matter anyway, under Dastar). Moreover, a reference to “Outrigger” in email wasn’t infringement. However, there was a genuine issue of material fact whether defendants falsely represented to a customer that the test tires were their own tires when in fact, they were Outrigger tires, in order to get the customer to choose defendant over plaintiff. As a result, there was a viable false advertising claim even without an infringement claim. (“Commercial advertising or promotion” might be the big remaining barrier.)