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Albert v Spencer

Albert v Spencer
1998 WL 483462 (S.D.N.Y.1998)

Facts: P and D both use the title AISLE SAYS for theatre reviews. P has reviews, which appear in the “Singles Almanac,” which is a magazine distributed to approximately 40,000 people in New York. P has used the title for 19 years. D has published theatre reviews on an internet website suing the title AISLE SAYS since 1995. These are two good faith users of the same trade name who operate in distinct markets. P never registered AISLE SAYS, and D disputes having any knowledge of the title’s use by the P.

Procedure: Trademark infringement complaint is filed in Federal Court in the Southern District of New York.

Issue: Whether D is liable for trademark infringement for using the same trade name as the P?

Held: No. (complaint dismissed)

Rule: Balancing of all the circumstances, which demonstrates whether an appreciable number of ordinary prudent customers are likely to be confused or misled.
1. Strength of the mark
o Defined as its tendency to identify goods emanating from a particular source. Based on an evaluation of two factors:
 The degree to which the mark is inherently distinctive.
 The degree to which the mark is distinctive in the marketplace.
2. Similarity between the two marks
3. The “competitive” proximity of the products in the market place
4. The likelihood that the prior user will bridge the gap between the two products
5. Evidence of actual confusion
6. Defendant’s bad faith
7. The quality of the defendant’s product
8. The sophistication of the relevant consumer group

Rationale: Although the parties placed emphasis on Polaroid Factors set forth by 2nd circuit, the court reasoned that the eight factor test is not exclusive because the number of factors weighing in each party’s favor is not determinative of liability. The court exclaimed that, the essential inquiry is whether an appreciable number of ordinary prudent customers are likely to be confused or misled.” The balancing of the factors suggests that there is no real danger that an appreciable number of consumers will be misled as to the source of the review they are reading. Here, there was and is no real competition between the P’s and D’s reviews. Moreover, D added a disclaimer to his website. For this reason, it is unlikely that P will suffer harm. Enjoining D will cause D to suffer far greater harm.


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