By: Brian A. Hall
Category: Trademark Infringement
The United States District Court for the Eastern District of Ohio denied a motion for reconsideration to alter or amend a judgment pursuant to FRCP 59(e) and held that the “evidence still fails to create a genuine issue of material fact as to whether SpinLife’s alleged uses of the three-word phrase “the scooter store” creates a likelihood of confusion necessary to support its affirmative claims for trademark infringement, unfair competition, unjust enrichment and misappropriation.” Plaintiff The Scooter Store, Inc. sued Defendant SpinLife.com, LLC for, among other causes of action, trademark infringement and unfair competition in connection with SpinLife’s purchase of Google AdWords for “the scooter store” and other similar combinations as well as use of the phrase in “metadata” and “meta tags” on its website. The Court previously ruled that “[t]he phrases ‘the scooter store,’ ‘scooter store,’ and other such phrases containing ‘scooter store’ are generic, and Plaintiff TSS has no trademark rights in the use of these phrases.”
Plaintiff sought reconsideration to introduce expert testimony that the phrases are not generic and that instead the consumer public associates them with Plaintiff. Put another way, Plaintiff sought to introduce additional evidence to create an issue of material fact in an effort to avoid invalidation of its THE SCOOTER STORE trademark as generic. The Court denied the motion for reconsideration and again recognized that the phrases are generic (interestingly, the Court also mentions the word descriptive, which could change the entire analysis and determination as to trademark rights given the ability to acquire distinctiveness in a descriptive mark).
To the extent the Court found the mark generic, then THE SCOOTER STORE is indeed UnIntellectual Property. However, to the extent the Court found the mark descriptive (bearing in mind the registrations and the presumptions that go along with such registrations), it may not ultimately be UnIP. Regardless, the Court did find no likelihood of consumer confusion given the weakness of the mark and other factors that seem to be common in keyword infringement lawsuits. Needless to say, the Plaintiff probably did not expect a genericness finding that has the potential to do far more damage to its business than an online competitor. My guess is that the Plaintiff will be scooting to an appeal as soon as possible. Unfortunately, the appellate process is more like using a walker than a scooter.