generic – Attorney Evan Brown

December 9, 2009 Trademarks

Court denies motion to dismiss AdWords trademark infringement case

FragranceNet.com, Inc. v. Les Parfums, Inc., — F.Supp.2d —, 2009 WL 4609268 (E.D.N.Y. December 8, 2009)

FragranceNet.com sells perfume online. It sued several of its competitors, claiming trademark infringement and other causes of action like unfair competition and unjust enrichment, over the defendants’ alleged purchase of variations of the term “fragrancenet” to trigger sponsored links on Google results pages. These sponsored links allegedly drove traffic to defendants’ websites.

The defendants moved to dismiss the complaint. Had this case been filed a year ago, the defendants may have argued that the case should be dismissed because the purchase of keywords to trigger sponsored links was not “use” of the marks. But in light of the Rescuecom decision from this past spring, defendants were constrained to argue differently.

They claimed that the case should be dismissed because the purchased keywords are generic terms and therefore not protectible as trademarks. The court rejected this argument, holding that it was inappropriate to determine whether the marks are generic at the motion to dismiss stage because plaintiff had adequately stated plausible trademark claims in its complaint. The question of genericness is better considered with some actual facts.

Photo courtesy Flickr user hslo under this Creative Commons license.

November 17, 2008 Trademarks, Unfair Competition

Results of Internet searches helpful in earthworm trademark case

Cascade Mfg. Sales, Inc. v. Providnet Co. Trust, 2008 WL 4889716 (W.D. Wash. November 12, 2008)

Cascade Manufacturing makes and sells composting bins in which earthworms “enhance and accelerate the composting process.” Cascade owns a federal trademark registration for WORM FACTORY. It sued its competitor Providnet Co. for trademark infringement over Providnet’s use of the mark GUSANITO WORM FACTORY. Cascade moved for a preliminary injunction against Providnet’s use of its “worm factory” mark. The court granted the motion.

One of Providnet’s arguments against the injunction was that “worm factory” is a generic term for the types of products being sold under the respective marks. To refute this contention, Cascade introduced evidence of Internet searches supporting its claim that the products at issue are referred to as “worm bins,” and that “worm factory” refers to Cascade’s particular product. The court found this evidence to be instructive.

Earthworm picture courtesy Flickr user Rick Harris under this Creative Commons license. Redistributed here under the same license.

June 25, 2008 Evidence

Company’s own website provided evidence of claimed trademark’s genericness

Boston Duck Tours LP v. Super Duck Tours LLC, —F.3d—, 2008 WL 2444480 (1st Cir. June 18, 2008)

Boston Duck Tours has been providing tours of Boston in amphibian vehicles (called “ducks” but spelled DUKWs) since 1993. After a competitor moved into town in 2007 calling itself Super Duck Tours, Boston Duck Tours filed suit for trademark infringement. The district court enjoined Super Duck from using its mark and logo. Super Duck sought review with the First Circuit Court of Appeals. On appeal, the court reversed.

It held that the lower court erred in finding that the term “duck tour” was not a generic term outside the protection of trademark law. In reaching this decision, the appellate court reviewed evidence of Boston Duck’s own use of the term in a generic sense, including on its website. For example, a sentence read, “[c]ontrary to local belief, the unique idea of a [d]uck [t]our did not originate in Boston.”

The case should serve as a warning to brand owners to ensure (apart from not selecting a generic term in the first place) that they use their marks in a manner that avoids “genericide”.