No Fame In Mensa's Trademark, Court Finds
- American Mensa, Ltd. v. Inpharmatica, Ltd. et al., No. 07-3283 (D. Md filed Dec. 6, 2007); assigned to J. Quarles
In American Mensa v. Inpharmatic, the U.S. District Court for the District of Maryland granted in part and denied in part Defendants' motion for summary judgment. In doing so, the court found in favor of Mensa on Defendants' motion for summary judgment of no trademark infringement or unfair competition because genuine issues of fact remained, but granted Defendants' motion for summary judgment of no trademark dilution because there was no evidence that Mensa's mark is famous.
In June 2004, Inpharmatica applied for use of the ADMENSA mark for a variety of services. After the application was published for opposition, Mensa asked Inpharmatica to withdraw its application because the mark would damage Mensa; Inpharmatica refused. On November 22, 2006, Mensa filed an opposition to Inpharmatica’s application with the PTO’s Trademark Trial and Appeal Board. During discovery in the PTO proceeding, Mensa learned that Inpharmatica had begun using the ADMENSA mark in the U.S. On December 6, 2007, Mensa filed the present suit seeking an injunction and damages. On August 25, 2008, the Defendants moved for summary judgment on Mensa’s claims.
Trademark infringement and unfair competition
Section 32(1) of the Lanham Act prohibits the use in commerce of a "reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale. . .or advertising of any goods or services . . . [that] is likely to cause confusion, or . . . mistake." § 1114(1).
To prove trademark infringement or unfair competition, Mensa must show that (1) it owns a valid trademark; (2) the Defendants use a colorable imitation of the mark in commerce without Mensa’s consent; and (3) such use is likely to cause confusion. As to the issue of confusion, the court examined how the parties use their marks to determine the likelihood of confusion.
Whether a mark is likely to cause confusion depends on several factors: (1) the strength or distinctiveness of the plaintiff’s mark; (2) the similarity of the marks; (3) the similarity of the goods or services the marks represent; (4) the similarity of the facilities the parties use in their business; (5) the similarity of the parties’ advertising; (6) the defendant’s intent; and (7) actual confusion. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 259-60 (4th Cir. 2007).
After analyzing each factor, the court found that the Mensa Mark is strong. However, the court also found that the parties’ services are not related (Mensa is an organization for intelligent individuals, and the Defendants are in pharmaceutical research). Mensa’s support of scientific colloquia and some research does not make it sufficiently similar to the Defendants research. The court found that Mensa had provided no evidence of actual confusion. And, the relevant consumers are generally highly sophisticated.
The court also found that there existed a genuine dispute about the aesthetic similarity of the marks, as well as the Defendants’ intent in creating the ADMENSA mark. Although Mensa’s inability to show actual confusion weighed strongly against infringement (the court found that the evidence of record "falls woefully short of showing actual confusion among consumers, and at best, it shows that some of Inpharmatica’s consumers draw a similarity between the names but fails to show any actual confusion as to whether Mensa and Inpharmatica are linked"), confusion is not required. Viewing the facts in Mensa’s favor, summary judgment was denied on the Lanham Act infringement and unfair competition claims and the Maryland common law infringement claim.
Dilution of Trademark
Under 15 U.S.C. § 1125(c)(1), "the owner of a famous mark that is distinctive . . .shall be entitled to an injunction against another person who . . . [uses] a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of . . . actual or likely confusion, of competition, or of actual economic injury."
To be famous for dilution purposes, the court said that a mark must be more distinctive and stronger than that required in an infringement claim. To prove a dilution claim, Mensa had to show that (1) the Mensa mark is famous and distinctive; (2) the Defendants use a mark in commerce that is diluting the Mensa mark; (3) similarity between the ADMENSA mark and the Mensa mark gives rise to an association between them; and (4) the association is likely to impair the distinctiveness of the Mensa mark or likely to harm its reputation. Louis Vuitton, 507 F.3d at 264-65.
In this case, the court noted that the Trademark Dilution Revision Act (TDRA) significantly increased the difficulty of proving a dilution claim by requiring a mark to be famous to the general public. Unless a mark is a "household name" whose fame is not at all in doubt, it cannot support a dilution claim, the court wrote. Although Mensa has been mentioned in the media, it has spent little money on advertising and receives little revenue. The court said it is not a household name like those marks that have earned dilution protection, such as Hershey’s, Nike, Visa, and American Express. Judgment was granted to the Defendants on Mensa’s dilution claim.
This case is set for an April 2009 trial.
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