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Plush toy pillow

A pillow, yes; a pet, no.

A District Court in New York has become the latest to find that using a competitor’s trademark in Google’s AdWords program can be trademark infringement. District Judge Roslynn R. Mauskopf found that the Defendants’ selection of “PILLOW PETS” and similar marks as a trigger for Google Ads is likely an infringement of the Plaintiff’s registered trademarks “MY PILLOW PETS” and “IT’S A PILLOW, IT’S A PET”, and granted Plaintiff’s motion for a preliminary injunction. The case is CJ Products LLC v. Snuggly Plushez LLC, 11-CV-0715 (RRM)(SMG), NYLJ 1202512398696, at *1 (EDNY, Decided August 22, 2011).

The Memorandum discusses preliminary injunctions for alleged copyright infringements, false advertising, and false designations of origin, as well as laches and estoppel, but it is the consideration of AdWords in the context of similarity of marks and likelihood of confusion that is most interesting for present purposes.  (Posts about the other issues will follow).

Similarity of marks

The Court’s consideration here is, according to Judge Mauskopf at *36, the majority approach among Federal Courts.  Its assessment of the totality of circumstances includes consideration of representations made by a Defendant after an ad has been considered, and clicked, by the consumer (a sort of after-the-fact confusion). Per *37:

These advertisements, which link directly to defendants’ pillowpets.co website, are virtually identical to plaintiff’s “Pillow Pets” trademark in appearance, sound, and meaning. Moreover, the defendants’ website, to which consumers are referred, is virtually identical to the plaintiffs’ website, using the same color, format, fonts, and phrases—including the mark “Pillow Pets.” A consumer is highly likely to be misled by the totality of these circumstances. Thus this factor weighs strongly in favor of plaintiffs’ likelihood of success on the merits.

Likelihood of confusion

Regarding consumer confusion, the Court, at *37-*39, again endorses initial interest confusion, holding that:

[I]n the website context, courts have applied the doctrine of initial interest confusion, which posits that a likelihood of confusion can arise when “a consumer who searches for the plaintiff’s website with the aid of a search engine is directed instead to the defendant’s site because of a similarity in the parties’ website address.” Savin Corp. v. Savin Grp., 391 F.3d 439, 462 n.13 (2d Cir. 2004). Thus “[e]ven if the customer quickly becomes aware of the competing source’s actual identity and can rectify the mistake, the damage to the first user” may already have been done. BigStar Entmn’t, Inc. v. Next Big Star, Inc., 105 F. Supp. 2d 185, 207 (S.D.N.Y. 2000). …

*38

… Yet “[b]ecause consumers diverted on the Internet can more readily get back on track than those in actual space, thus minimizing the harm to the owner of the searched-for site, Internet initial interest confusion requires a showing of intentional deception.” Savin, 391 F.3d. at 462 n.13.

… More importantly on the issue of intentional deception, plaintiffs further argue that in “approximately April, 2011…[d]efendants set out a more intentional course of conduct to infringe on [p[laintiff[s]'[] trademark and confuse consumers. Defendants shifted their focus from the Plushez.com website to a near mirror image PILLOWPETS.CO website where [d]efendants prominently used PILLOWPETS.CO[] and “Pillow Pets” as trademarks, replaced

*39
PLUSHEZ with ‘Pillow Pets,’ [and] prominently displayed knockofs [sic] of the CJ’s most popular products.” (Drangel Decl. ¶¶4-7, Ex. A-D.)

… Given the totality of all these similarities—in which defendants use a phrase substantially similar to plaintiffs’ mark, in order to direct consumers to a website that uses plaintiffs’ mark in a confusing manner and looks substantially similar to the plaintiffs’ website, and which sells products that are substantially similar in appearance and price to those copyrighted by plaintiffs—the Court concludes that this factor weighs heavily in favor of plaintiffs’ likelihood of success on the merits.

Although this was only a motion for an injunction, and not an adjudication on the merits, it seems that the increased traffic gained by using competitors’ trademarks for use in an AdWords campaign is likely to be offset by a real risk of liability for trademark infringement.  A similar decision (on the merits) was reached earlier this year in California (see post on Binder vs. Disability Group), indicating that there may be some consensus emerging in this area.