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super duper v. mettel

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382 Fed.Appx. 308, 2010 WL 2340250 (C.A.4 (S.C.))

Procedural History: Super Duper challenges the district court’s denial of its motion for judgment as a matter of law. Affirmed.

Facts: Alleged infringer filed declaratory judgment action, requesting that its trademarks did not violate toy maker's intellectual property rights, including the latter's "SEE 'N SAY" mark. Defendant counterclaimed, contending that plaintiff had engaged in trademark infringement, trademark dilution, unfair competition, and fraud upon the United States Patent and Trademark Office (USPTO). Following trial at which jury found that plaintiff's use of seven trademarks infringed upon and/or diluted four of defendant's preexisting marks and awarded defendant $400,000.00 in damages, the United States District Court for the District of South Carolina entered orders denying plaintiff's renewed motion for judgment as a matter of law, granting defendant's motion for a permanent injunction. Plaintiff appealed.

Issue: whether district court erred in denying Super Duper’s motion for judgment as a matter of law on Mattel’s claims’ for trademark infringement and trademark dilution.

Holding: No, the evidence presented at trial was sufficient for the jury to conclude that the simultaneous use of Mattel’s and Super Duper’s marks would (1) Create a likelihood of confusion in the mind of an appreciable number of ordinarily prudent purchasers regarding the source of the goods in question and (2) impair the distinctiveness of Mattel’s famous marks. Affirmed.

• It is well established that no actual confusion is required to prove a case of trademark infringement.
o While it is true that a lack of evidence of actual confusion over a substantial period of time may create a strong inference of no likelihood of confusion, the absence of such proof does not preclude a party from proving a likelihood of confusion based on a compilation of other evidence.
• Additional likelihood of confusion factors should be weighed differently such as difference in the parties’ products, marks, and facilities.
o No, the likelihood of confusion is an inherently factual issue that depends on the facts and circumstances in each case
o As a cross section of consumers, the jury is particularly well suited to evaluating whether an ordinary consumer would likely be confused.
• Super Duper argues against Mattel’s trademark dilution claim based on the lack of survey evidence and expert testimony as the likelihood of dilution.
o The successful prosecution of trademark dilution claim doesn’t mandate the production of survey evidence or expert testimony.
• Instead, to determine whether a junior mark is likely to dilute a famous mark through blurring, the TDRA directs the trier of fact to consider all factors relevant to the issue, including six factors that are enumerated in the statute.
• Not every factor will be relevant in every case, and not every blurring claim will require extensive discussion of the factors.

Likely Future importance or unanswered questions: Since 4th Circuit held that no actual evidence of confusion is required to prove likelihood of confusion and circumstantial evidence may suffice the likelihood of confusion, the original Trademark holders are not required to show actual confusion of consumers to prove likelihood of confusion. This seems to be a favorable factor to trademark holders. Moreover, the Court held that survey or expert testimony is not required to prove dilution. Rather all factors relevant to the issue should be considered. Not every factor is relevant to every case and thus, case-by-case approach is important in dilution case.

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