Tuesday, February 15, 2022

keyword ads, product names not confusing in ex-roommate spat

Boost Beauty, LLC v. Woo Signatures, LLC, 2022 WL 409957, No. 2:18-cv-02960-CAS-Ex (C.D. Cal. Feb. 7, 2022)

Another keyword ad-plus case fails.  Boost alleged that Woo engaged in a scheme to gain access to Boost’s confidential information and thereby replicate its beauty product. Defendants also allegedly unlawfully used variations of the Boost’s trademark “BoostLash,” as an adword.

As a plaintiff, you probably don’t want the background narrative to start with “Plaintiff started selling BoostLash, which has the same purpose and functionality as Idol Lash, in 2017, while plaintiff’s principals were still employed at Idol Lash.” Plaintiff’s and defendant’s principals were roommates, which allegedly gave defendants the opportunity to copy despite an oral confidentiality agreement, on which the court denied summary judgment. Also: Plaintiff’s principal took defendant’s principal’s SIM card and “was able to monitor defendants’ communications, including defendants’ discussions of business ideas and conversations with their lawyers, for at least three months.” They allegedly copied Woo’s “business things” for Boost. But we're here for the trademark parts of the case!

“BoostLash” is a registered trademark for “non-medicated eyelash growth serum.” Despite some deposition testimony strongly suggesting descriptiveness, the court didn’t have to classify the mark for this case (one of plaintiff’s principals said they chose the name BoostLash because “it’s right to the point,” and “the meaning of the word is perfect for the product”; “the purpose of the product is to boost the size of eyelashes”; though she also said that the name wasn’t chosen for descriptiveness but “because the name had a nice, tight, sound and ‘zip’ to the word.”) There are 47 live trademarks using “Boost” in cosmetics, and 730 registered trademarks using “Lash.”

The products each cost $49.95 per unit. Boost alleged a “couple dozen” confusion instances, but didn’t have memorialized evidence thereof.

The court found that WooLash and BoostLash were not confusingly similar and that the keyword advertising was not infringing.

Was BoostLash descriptive despite the registration? This was a question of fact that couldn’t be resolved on the record, which didn’t include surveys or other survey research. The court found the imagination test for descriptiveness “inconclusive” “to determine whether consumers would require a mental leap to understand that BoostLash refers to an eyelash growth serum.” [Sigh. That is not the test. Is Apple descriptive? Well, for what? The only coherent way to test descriptiveness is to ask what’s required to connect two things you already know about—the mark and the goods/services—rather than asking whether the goods/services can be guessed from the mark alone.] But the PTO’s registration without requiring secondary meaning counseled against finding descriptiveness.

Despite that, the multifactor confusion test showed confusion unlikely. Strength: the existence of a bunch of other “Boost” and “Lash” cosmetic trademarks cut against conceptual strength. And Boost submitted no evidence of marketplace recognition of the Boost Beauty brand or the BoostLash product.


WooLash (or wool ash, as I would have read it)

Similarity: No reasonable consumer would mistake the term “woo” for the term “boost” in terms of “sight, sound, and meaning.”

Actual confusion: No record evidence. “Testimony regarding third-party calls wherein the callers allegedly expressed actual confusion between BoostLash and WooLash is hearsay, as it describes out-of-court statements offered for the truth of the matter asserted.” [I’m not enough of an evidence person to have a fully-thought-out view of this. It does seem like some expressions of confusion would be admissible for their demonstration of the consumer’s then-current mental state and not for the truth of the matter asserted—but as the court notes here, the less detail there is about who the people were, what exactly they said, and what about the parties’ products caused them to say that, the less that seems reliable even as an indicator of mental state. I’d be interested to know if there was any good writing on the topic of what constitutes an admissible statement about third party confusion.]

That the goods were “cosmetic products that consumers must apply to a sensitive portion of the body, and that cost nearly $50.00,” counseled against likely confusion.

WooLash and BoostLash weren’t similar enough to justify finding bad intent.

The factors that favored Boost—similarity of the products/marketing channels—were not meaningful given the other factors; they’d favor Boost no matter what the product’s name was. Summary judgment for Woo.

AdWords example

Adwords: Woo pointed out that using competitive adwords is standard, and that its linked website wasn’t confusing. Boost argued that “whether two different websites look similar and, if so, whether the Defendants’ website would cause likely cause confusion, are questions of fact for a jury to decide.” The key here is labeling, and the ads were properly labeled. Multi Time Machine v. Amazon: “Where a court can conclude that the consumer confusion alleged by the trademark holder is highly unlikely by simply reviewing the product listing/advertisement at issue, summary judgment is appropriate.” That was the case here. The ad text didn't use BoostLash, and it did use WooLash, and it was marked as an ad; that's all that's required. [Take that, Second Circuit in 1-800-Contacts!]

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