comparative advertising isn't confusing

Windmar PV Energy, Inc. v. Solar Now Puerto Rico, LLC, 2025 WL 725078, NO. 24-1570 (RAM) (D.P.R. Mar. 6, 2025)

A frivolous lawsuit against comparative advertising; the court gets the right result at least. Windmar and Solar now compete in the Puerto Rico market for the sale and installation of solar energy equipment. Windmar has registrations with various elements including: the silhouette of the sun’s corona; the words “WINDMAR” or “WINDMAR HOME”; a combination of the colors orange, blue, black, and grey; and a stylized image of a windmill replacing the “I” in “WINDMAR.” The typical logo shows the words “WINDMAR HOME” written in blue and grey, with the “I” replaced by a blue windmill logo; the words are placed under and within an orange outline of a sunburst or corona. Windmar alleged that it was the “number one” company in the “solar energy industry in Puerto Rico.”

Solar Now’s marketing campaign featured ads and billboards that showed a salesman pointing to a form listing three different options for solar companies: a colored logo of Solar Now and two greyscale logos that feature the profile of a sun and its corona, one titled “PAQUITO SOLAR” and the other “MOLINITO.” Windmar alleged that “MOLINITO” (which translates to “little windmill”), when used in conjunction with the sun-related imagery, alludes to Windmar’s logo. Solar Now’s logo is next to a “X” mark of approval while the two greyscale logos are placed further down the form, allegedly implying that they are inferior options to Solar Now.

billboard

social media post

This just didn’t plausibly allege likely confusion, although the court relied way too heavily on the dissimilarity of the Windmar marks from what Solar Now actually used, as opposed to the obvious comparative advertising context. At least the court noted that most of the Pignons factors favoring Windmar (similarity of goods, channels of trade, advertising, and prospective consumers) “could be true for any two companies competing in the same market and geographic area, and do not weigh as heavily in the Court’s analysis.” The court declined to rely on nominative use because the First Circuit hasn’t adopted a specific test.

Nor did Windmar successfully plead fame for dilution. Even if the marks were famous, the comparative advertising and parody exclusions applied. “[W]hen viewed in the light most favorable to Plaintiff, the purpose of billboards and social media posts at issue is clear to a reasonable consumer: humorous comparative advertising showing Solar Now should be chosen over its (fictional or real) competitors.” Separately, the parody exclusion also applied, because “MOLINITO” “is not a particularly flattering phrase, mocking Plaintiff’s logo and reputation by referencing it as a tiny windmill.” It did not plausibly serve as a source-indicator for Solar Now. “It is abundantly clear that Plaintiff is the subject of Solar Now’s joke.”

Although the court misunderstood descriptive fair use to be limited to personal names, that didn’t matter.