Bayer Corp. v. Custom School Frames

259 F.Supp.2d 503 (E.D.La.,2003)

Facts: Bayer Corp. (“Plaintiff”) manufactures and markets Advantage, a chemical for the removal of cat and dog fleas, around the globe. However, Advantage is specifically tailored to meet the environmental and consumer laws of each individual country. Therefore, for example, Advantage that is tailored for the United States can only be sold in the United States. Advantage can only be sold through a licensed agent, and Plaintiff maintains a website (www.nofleas.com) that offers information on Advantage. Custom School Frames (“Defendant”) operates a website (www.no-fleas.com) that sells Advantage over the internet. Defendant is not a licensed distributor and they sell Advantage that is packaged and specifically manufactured for Australia and the United Kingdom to customers in the United States. Defendant also uses metatags containing Plaintiff’s trademark to help place them at the top of various internet search engines. The Plaintiff brought suit to prevent the unlawful sale of foreign manufactured Advantage bearing their mark and the prominent use of this mark on Defendants' web site.


- To be protected, a trademark must be: (1) distinctive; (2) used in commerce, (3) be affixed or associated with goods and services; and (4) signify the source of origin of those goods and services with which it is associated.

- Initial Interest Confusion, a type of trademark infringement, results when (1) any person who in connection with any goods or services; (2) uses a term, symbol etc. in commerce; (3) with any false designation of origin, description of fact which is likely to cause confusion, show sponsorship or connection; OR misrepresents the nature of qualities or geographic origins of his product. Lanham Act. 43(a).

- Threshold for determining whether gray market products differ materially from authorized domestic product, and thus violate Lanham Act, is always quite low, for it is by subtle differences that consumers are most easily confused.

Holding: The court held that the sale of Advantage under same trademark used in connection with authorized domestic product was infringing and diluting under the Lanham Act.

Analysis: First, the court found that because of registration and its reputation, the plaintiff easily had a protected trademark. Second, the court found that there were enough material differences between the United States Advantage and the foreign Advantage to find trademark infringement via initial interest confusion. The court noted that there were differences in packaging and labeling, and that the foreign Advantage did not chemically comply with the EPA or the Louisiana environmental department requirements. The court also noted that the use of a very similar domain name, use of metatags on search engines, and similar trademark was enough to result in consumer confusion and thus injure and tarnish the reputation of the Plaintiff and appropriate their goodwill. Therefore, the defendant infringed up the plaintiff’s trademark by creating initial interest confusion.

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