Wednesday, October 28, 2009

Trademark Infringement: Injunctions, False Designation of Origin and Strength of Mark, False Advertising

Green Bullion Financial Services, LLC, v. Money4Gold Holdings, Inc., 2009 WL 1758728 (S.D. Fla. June 22, 2009).

False Designation of Origin:

Plaintiff claimed that Defendant is engaging in trademark infringement by creating a false designation of origin of its services. Normally the likelihood of confusion factors are considered as a whole, but here the strength of the plaintiff’s mark factor was determinative. The trademark at issue in this case is the word mark "Cash4Gold" and a stylized logo bearing the same words. The Parties agree that the mark is not inherently distinctive but is a descriptive word mark. Since the mark is descriptive, to be worthy of protection Plaintiff had to show that "Cash4Gold" has acquired "secondary meaning" applying factors from the Conagra case. There was a maximum of eighteen months of use before the infringement in September of 2008.

There are four advertisements in question: a commercial read by Howard Stern on his radio show, frequent nationwide television commercials on “major” cable stations, mark "Cash4Gold" affixed prominently to the car of driver Brandon Knupp, although it is dated August 12, 2008, and corporate advertisements with the Washington Wizards. The court found there was not enough evidence in the record to establish the size of consumer base that was reached with this advertising, recognition of the advertisements, or amount of sales attributable to them. Therefore the court held secondary meaning was not proved.

The second element of determining the strength of the "Cash4Gold" mark is its strength in the marketplace, which was also not proved with the evidence, using the same consideration for secondary meaning.

The court denied the motion for injunction based on false designation of origin for lack of evidence.

False Advertising:

Several advertisements are at issue and all were false. First, sub-affiliates advertising for Defendant placed sponsored links on Google asking the viewer "See our Super Bowl Ad?". These are literally false because they indicate to the viewer that the company placing those links advertised during the Super Bowl. Second, the advertisements containing the name under which Plaintiff does business, Cash4Gold, are also false. They imply that Plaintiff, who does business as Cash4Gold, is the operator of those websites and that the consumer doing business through those websites is doing business with Plaintiff.

However, the second element, of customer deception, was not proved by the evidence in the record. Although literal falsity of several of Defendant's advertisements was apparent and there is no need to prove the advertisements actually deceived any customer, Plaintiff offered no evidence to establish that the literally false advertisements were material to any customer's purchasing decision. Since Plaintiff did not provide evidence establishing that the falsie advertisements influenced the decisions of customers, the court found that Plaintiff was unlikely to succeed on the merits at that time.

The motion for an injunction was not granted.

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