Smiley Company Frowns On Court’s Decision to Deny Motion to Dismiss

An Illinois district court has denied a motion to dismiss filed by Franklin Loufrani and The Smiley Company SPRL (together “Smiley”) seeking dismissal of numerous counterclaims brought by Wal-Mart Stores, Inc. (“Wal-Mart”) in Smiley’s action under 15 U.S.C. § 1071(b)(1) seeking judicial review of the Trademark Trial and Appeal Board’s (“TTAB”) final decision dismissing Smiley’s opposition to Wal-Mart’s trademark application. See Loufrani et al v. Wal-Mart Stores, Inc., 2009 U.S. Dist. LEXIS 105575 (N.D. Ill. Nov. 12, 2009). For background on the long running dispute and the TTAB decision leading up to the lawsuit by Smiley, see my prior blog post here and John Welch’s post on The TTABlog®.

At the TTAB level, the Board dismissed Smiley’s opposition of Wal-Mart’s application to register its Mr. Smiley Mark (the “Wal-Mart Mark”) and sustained Wal-Mart’s opposition of Smiley’s intent-to-use applications (here and here) for Loufrani’s Smiley Face Design (the “Loufrani Mark”) on the basis that the Wal-Mart Mark had acquired a secondary meaning, the Loufrani Mark had not acquired distinctiveness and so could not be registered, and that Smiley’s use of the Loufrani Mark in certain classes of goods would create a likelihood of confusion with the Wal-Mart Mark.

Rather than appeal the TTAB’s decision to the Federal Circuit, Smiley filed a district court action under Section 21(b)(1) of the Lanham Act (15 U.S.C. § 1071(b)(1)) seeking judicial review of the TTAB’s decision. Smiley sought an order declaring its mark to be distinctive, reversing the TTAB’s decision finding a likelihood of confusion, directing the PTO to issue a Notice of Allowance for its applications, and reversing the TTAB’s decision finding that the Wal-Mart Mark had acquired distinctiveness. In response, Wal-Mart filed a six counterclaims: Count I sought a declaratory judgment that the TTAB’s decision was correct, Counts II-IV sought a declaratory judgment that Smiley’s use or licensing of the Loufrani Mark would constitute trademark infringement under federal and common law, and Counts V-VI sought a declaratory judgment that Smiley’s use or licensing of the Loufrani Mark would violate Illinois’ Deceptive Trade Practices Act and Consumer Fraud and Deceptive Business Practices Act.

Smiley moved to dismiss Counts II-VI on the basis that Counts II-VI presented no case or controversy. Smiley also argued that Counts II-IV should be dismissed because the limited scope of this Court’s review of the TTAB’s decision would make the court’s determination of the issue of trademark infringement an improper advisory opinion. Finally, Smiley moved to dismiss Count VI on that basis that Wal-Mart failed to plead that it suffered actual damages as required under the Illinois statute.

With respect to Smiley’s argument that Wal-Mart’s counterclaims presented no case or controversy, the Court, taking all of the facts in Wal-Mart’s counterclaims in the light most favorable to Wal-Mart, concluded that Wal-Mart had plead sufficient facts establishing the existence of a justiciable controversy. In each of Wal-Mart’s counterclaims, Wal-Mart alleges that if Smiley were to begin to use the Loufrani Mark (the application for which identifies hundreds of goods and services identical to goods and services offered by Wal-Mart in its retail stores), it would create a likelihood of confusion with Wal-Mart’s use of its Wal-Mart Mark.

The court, however, took the common sense approach in determining whether an actual controversy exists by noting that “the primary evidence of a substantial controversy here is the case itself: that is, that the parties have numerous claims against one another over similar smiley-face marks that both desired to register with the PTO.” The court also noted that the parties had already developed clear positions on the issue of infringement, thereby further demonstrating a substantial controversy and adverse legal interests of the parties.

With respect to Smiley’s argument that Wal-Mart’s Counts II-IV would constitute an advisory opinion, Smiley argued that Wal-Mart’s trademark infringement counterclaims inappropriately seek to have the court, in reviewing the TTAB’s decision regarding likelihood of confusion, decide whether hypothetical use of the Loufrani Mark constitutes trademark infringement.

The court noted, however, in a district court’s review of a decision by the TTAB, the district court may rule on the issues of likelihood of confusion and trademark infringement under the Lanham Act (citing CAE, Inc. v. Clean Air Engineering, Inc., 267 F.3d 660, 664, 678 (7th Cir. 2001)). The court added that, under the broad jurisdictional powers conferred by the Lanham Act upon district courts (citing Steele v. Bulova Watch Co., 344 U.S. 280, 283-84 (1952)), it may affirm the TTAB’s explicit finding of likelihood of confusion and apply it to render a declaratory judgment that Smiley’s actions would violate the Lanham Act or common law.

In addition, because the court’s review of the TTAB’s decision is both an appeal and an independent action, the parties are allowed to submit new evidence and request additional relief. Accordingly, Wal-Mart, in its counterclaims, may request additional relief not specifically rendered by the TTAB. Finally, the court noted that because Wal-Mart’s counterclaims arise out of the same transaction or occurrence as Smiley’s claims (i.e., the same trademark oppositions and the TTAB’s findings with respect to both parties), Wal-Mart’s counterclaims are compulsory under Fed. R. Civ. P. 13(a)(1).

Finally, with respect to Wal-Mart’s Count VI, the court noted that it is impossible for a claimant seeking a declaratory judgment that a future act would violate Illinois’ Consumer Fraud and Deceptive Business Practices Act to plead damages since no violation would have yet occurred. And based on Wal-Mart’s showing of a substantial controversy between Smiley and Wal-Mart as to the issue of likelihood of confusion underlying all of Wal-Mart’s counterclaims, including Count VI, the court held that Wal-Mart has adequately pled its allegations in Count VI so as to survive a Motion to Dismiss.

As such, the court denied Smiley’s Motion to Dismiss.

Planet Hollywood Resort & Casino Gets TRO Against Domain Name

(Photo credit: Freelasvegasphotos.com)

Another week, another Las Vegas resort and casino cybersquatting case.

This week, it is OpBiz, LLC (“OpBiz”) – the owner of the Planet Hollywood Resort & Casino in Las Vegas – going after Unister GmbH (“Unister”), an company whose domicile is unknown but believed to be in Germany. See OpBiz, LLC v. Unister GmbH, Case No. 09-cv-02192 (D. Nev.). A copy of the complaint can be downloaded here. The Las Vegas Sun reports on the lawsuit here.

But unlike last week’s cybersquatting case pitting New York New York Hotel and Casino against the owner of newyorknewyork.com (blogged here), this lawsuit is a little more clear cut, as evidenced by the fact that the court has already issued a temporary restraining order in the case ordering the domain registrar to lock the domain and have it transferred to OpBiz pending the outcome of the litigation (copy of the order here).

According to the complaint, Unister registered the domain name http://www.planet-hollywood-resort.com/ with the domain name registrar Domain Robot on July 18, 2009, and soonafter, began linking the domain name to a “hotel reservation website offering links to services provided by Plaintiffs competitors.” OpBiz alleges that the website offers vacation and flight packages at the Planet Hollywood resort and casino, but when website visitors attempt to purchase such packages, they are informed that no rooms are available and instead offered to book rooms at other competing hotels, from which OpBiz believes Unister will obtain pay-per-click referral revenue. The website is already down but Google’s cache still has a snapshot of the website here.

This case is a much clearer illustration of the type of activity that the Anti-Cybersquatting Protection Act was designed to address. And yet, in the end, what does OpBiz get out of the lawsuit except possession of a fairly worthless domain name that was probably not getting much traffic in the first place (nor was it probably diverting a lot of customers away from Planet Hollywood, but this point is certainly up for debate). After all, how many web users will type in planethollywoodresort.com into a web browser with dashes between each word (OpBiz already owns the same domain name without dashes)? It’s not the type of domain name that internet users would just stumble across. Moreover, Unister’s website doesn’t appear anywhere among top search results for the terms Planet Hollywood Resort.

And while OpBiz, upon obtaining a default judgment when Unister undoubtedly fails to respond to the complaint, might be able to obtain the maximum statutory damages award of $100,000 for Unister’s infringing domain name (see 15 U.S.C. §1117(d)), is OpBiz really going to go through the steps to try and collect such a judgment? Then again, in these tough economic times with the Planet Hollywood Resort & Casino teetering on the verge of bankruptcy (news story here), maybe they will. And with federal courts possibly starting to come around towards accepting that domain names can be property subject to creditor claims (see court order in Bosh v. Zavala; see also comments by Venkat and Digital Media Lawyer Blog), perhaps there might be some property for OpBiz to attach after all.

Cybersquatting or Domain Name Hijacking? You be the judge.

New York-New York Hotel & Casino

On November 6, 2009, New York-New York Hotel & Casino, LLC (“NY-NY”), the company which owns the New York New York Hotel & Casino in Las Vegsa, brought a lawsuit in Nevada District Court against California resident Ronnie Katzin, the owner of the domain name newyorknewyork.com. See New York-New York Hotel & Casino, LLC v. Katzin et al, Case No. 09-cv-02139 (D. Nev.) The Las Vegas Sun reported on the lawsuit here and a copy of the complaint can be downloaded here.

Interestingly, NY-NY appears to acknowledge that Katzin registered the domain name around December 7, 1995, and has been in control of the domain name since it was registered in December 1995.

NY-NY appears to be basing its claim for cybersquatting on the fact that its predecessor in interest, MGM Grand, Inc, announced the hotel-casino in 1994, and then on September 13, 1995 (three months prior to the date Katzin registered the domain), NY-NY filed two trademark applications for NEW YORK NEW YORK (one for hotel services and one for casino services), which registered in September 1998. NY-NY claims that Katzin registered the domain name after learning of NY-NY’s plan to build the New York-New York Hotel & Casino. [Comment: Really? You don’t supposed it had anything to do with the fact that maybe “New York New York” is probably the most common way in which to identify New York City, New York and that the domain name might be a valuable domain name for offering marketing and promotional services for New York City businesses? ]

In February 2006, NY-NY had its attorney send a letter complaining about how the newyorknewyork.com website contained links which enabled visitors to book hotel reservations for both New York-New York Hotel & Casino and other Las Vegas hotels. After receiving the letter, Katzin stopped hosting a website which offered hotel bookings at the New York-New York Hotel & Casino.

However, according to the complaint, NY-NY recently discovered a large rectangle banner that appeared in the upper right part of the newyorknewyork.com website which featured a picture of the New York-New York Hotel & Casino and which, according to the complaint, when clicked on would lead the visitor to a different website (not NY-NY’s website) which allowed visitors to book a hotel room at the New York-New York Hotel & Casino (and very likely compensated Katzin for some amount per clicks). [Note: as of November 9th, the banner was still up, but as of November 10th, the banner no longer appeared and the rectangle was simply black.]

So what do you think? In order for a domain name registration to constitute cybersquatting, the person must register, traffic in, or use a domain name that is identical or confusingly similar to a mark that is distinctive at the time of registration of the domain name. Is Katzin a cybersquatter who registered this domain name in order to take advantage of NY-NY’s “distinctive” trademark rights at the time of registration or is NY-NY using this banner ad as a thin basis to now hijack this valuable domain name for its own use?

Does it make a difference knowing that both of NY-NY’s trademark registrations for NEW YORK NEW YORK were based on a claim of Section 2(f) acquired distinctiveness, which is pretty much an acknowledgement that the marks were not inherently distinctive and could not have been distinctive until such time as they were used in commerce, which NY-NY acknowledges was not until at least January 3, 1997?

11/11/09 Update:
Las Vegas Sun reporter Steve Green has a follow-up article on the lawsuit here after speaking directly with Katzin and getting his side of the story.

According to Katzin, he registered the domain name as part of a plan to create a site promoting New York City – the domain name is a reference to the song “New York New York” famously sung by Frank Sinatra (but originally performed by Liza Minnelli in the Martin Scorsese film of the same name).

Katzin also clarifies part of the allegations set forth in NY-NY’s complaint. Specifically, the complaint alleged that a company, True Magic, LLC, held onto the domain name and put up PPC advertising which were taken down after NY-NY’s counsel sent a letter. While the complaint never comes right out and states directly that Katzin and True Magic were one and the same, the insinuation is there based on subsequent allegations that Katzin controlled the website since 1995. According to Katzin, however, True Magic hijacked the name from him around 2004 and used it until 2006 when he was able to get it back.

As for the image of the New York-New York hotel-casino on his current website, Katzin explained that the image linked to a room-booking website operated by Expedia's Interactive Affiliate Network, which has a deal to sell MGM Mirage rooms (NY-NY is part of MGM Mirage). Katzin also indicates that an MGM Mirage official, who he did not identify, told him that such link would be authorized once Interactive Affiliate Network started booking rooms for MGM Mirage.

So does this change anybody’s mind about whether this is a real case of cybersquatting or an example of a “Goliath” company seizing an on opportunity to hijack a domain name from an innocent domain name owner?

Two more high profile trademark infringement lawsuits end with confidential settlements

McDonald’s reached a confidential settlement with the Lion's Tap – an Eden Prarie, Minnesota restaurant which claimed trademark rights to the mark WHO’S YOUR PATTY in connection with restaurant services (registration application applied for on August 25, 2009) – over McDonald’s Angus burger marketing campaign which used WHO’S YOUR PATTY as a tagline (see billboard below). Original complaint here. Articles on the settlement from NYTimes and AmLawDaily. Duetsblog comments here.

Yahoo also settled on confidential terms the lawsuit filed against it by Mary Kay Cosmetics back in July (blogged here) over pop-up ads appearing from supposedly unauthorized resellers of Mary Kay cosmetics that would appear in the “Yahoo Shortcut” feature of Yahoo’s e-mail services (pictured above). Article on the settlement from Bloomberg.

Weekly Wrapup of Nevada District Court Trademark Lawsuits

It was a busy week for trademark related lawsuit filings in the U.S. District Court for the District of Nevada (and not a single one of them filed by me).

Price Products, LLC v. Juvenile Solutions, Inc., Case No. 09-cv-02067 (D. Nev. October 27, 2009) (Complaint).

The owner of the DRIPSTIK ice cream/frozen treat holder (pictured above) sues for trademark and trade dress infringement over a knockoff product sold under the name FUN STIK by former Canadian distributor Petite Creations through Petite’s American distributor, Juvenile Solutions. Price Products discovered the products being marketed by Juvenile Solutions at an exhibitor’s booth at the ABC Kids Expo held on September 13-16, 2009, at the Las Vegas Convention Center (which is the only reason why an Idaho LLC is apparently suing a California corporation in Nevada district court).

M Holdings, LLC et al v. Hu Mei Lei, Case No. 09-cv-02071 (D. Nev. October 27, 2009) (Complaint) (Las Vegas Sun Article).
Las Vegas’ newest hotel and casino, The M Resort, files cybersquatting action against Chinese resident Hu Mei Lei over the website wwwmresort.com registered September 5, 2009, and purportedly featuring “provocative images of women” initially and changed thereafter to a typical pay-per-click landing page with links to discount hotel websites.

Rolex Watch U.S.A., Inc. v. Ryska et al, Case No. 09-cv-02093 (D. Nev. October 29, 2009) (Complaint) (Las Vegas Sun Article).

Rolex sues Las Vegas residents Angelika Ryska and Robert Mayer for counterfeiting over their sale of “replica” Rolex® watches through their website moreaffordable4u.com.

Mellow Beverage Co., LLC v. Nounna et. al, Case No. 09-cv-02090 (D. Nev. October 29, 2009) (Complaint) (Las Vegas Sun Article).

A company which sells a “relaxation and sleep aid” beverage under the unregistered trademark MELLOW (pending trademark applications here and here) filed a trademark infringement lawsuit against Shannon N. Nounna and Beverage Concepts, Inc. over a similar type of relaxation beverage using the name MELLOW (pictured below) (pending trademark application here) that Beverage Concepts is apparently launching soon.

CityCenter Land, LLC v. Papillon Airways, Inc. et al, Case No. 09-cv-02088 (D. Nev. October 29, 2009) (Complaint) (Las Vegas Sun Article).

The owner of the massive CityCenter project in Las Vegas is seeking a declaratory judgment that its proposed use of the name PAPILLON (pending trademark applications here and here) for one of CityCenter’s high-end retail stores located at CityCenter’s 500,000 square foot retail complex called “Crystals at CityCenter” does not infringe on the trademark rights of Papillon Airways, Inc. and Monarch Enterprises, Inc. which use the PAPILLON mark in connection with helicopter and bus tour services.

On September 3, 2009, Papillon Airways’ counsel sent a cease and desist letter to CityCenter, citing Paillion Airways’ trademark registration for PAPILLON for various goods and services (e.g., bumper stickers, clothing, helicopter and bus tour services) and claiming that CityCenter’s use of PAPILLON (logo version pictured above) is likely to lead consumers to believe there is an affiliation with Papillon Airways’ goods and services. CityCenter’s response is that Papillon Airways misrepresents the scope of its rights to the PAPILLON mark, which is always used in connection with “Grand Canyon Helicopters” (as pictured below), and thus the second claim for relief for misrepresentation.

Aloha Medicinals, Inc. v. Birkdale Medicinals, Inc., et al, Case No. 09-cv-00639 (D. Nev. October 29, 2009) (Complaint).

A convoluted lawsuit involving claims by Aloha Medicinals, a manufacturer of dietary supplements for people and pets, against former authorized distributor Birkdale Medicinals and one of its officers, Anthony “Tom” Peters, arising from Birkdale Medicinals’ apparent relabeling of Aloha Medicinals’ products to make it appear as if the products were Birkdale Medicinals’ own branded products. There are also claims relating to use of Aloha Medicinals’ copyrighted website, clinical and technical data for Aloha Medicinals’ products (used by Defendants as data for their products), using Aloha Medicinals’ unregistered trademarks as metatags and Google Adwords, and intentional misrepresentation regarding broken promises over special packaging provided by Aloha Medicinals to Birkdale Medicinals.

Nevada District Court dismisses some of Texas Domainer’s counterclaims against World Market Center

In a case that pits the World Market Center against Texas’ most notorious domainer, Texas International Property Associates (“TIPA”), the Nevada District Court granted World Market Center Motion to Dismiss (with leave to amend) several counterclaims that sought cancellation of some of World Market’s Center registered trademarks listed in its complaint that did not form the basis of its trademark infringement and cybersquatting claims against TIPA. World Market Center Venture, LLC v. Texas International Property Associates, Case No. 08-cv-01753, 2009 U.S. Dist. LEXIS 95752 (D. Nev. October 14, 2009).

On December 12, 2008, World Market Center Venture, LLC, (“WMCV”), the owner and operator of the wholesale furniture trade show complex World Market Center in Las Vegas, filed a trademark infringement and cybersquatting lawsuit against TIPA the well-known domain name holding company that is no stranger to cybersquatting lawsuits, over TIPA’s registration of the domain name lasvagasmarket.com (the “typosquatting” variation of lasvegasmarket.com, used by WMCV to promote the World Market Center) on February 4, 2005, and subsequent use of the domain name in connection with a website that displays links to other websites related to Las Vegas activities (most likely your standard PPC landing page but its currently disabled).

WMCV owns the registered mark WORLD MARKET CENTER along with other variations on the mark including LAS VEGAS MARKET (filed in September 2004 with claimed first use going back to April 2001 and able to be registered on the Principal Register under section 2(f) on the basis of acquired distinctiveness). [Click here my posting on a Nevada district court decision earlier this year on the “genericness” of this particular registered mark].

Soon after the filing of its complaint, WMCV obtained a temporary restraining order requiring the registrar to lock the domain name and ordering TIPA to cease any use of Plaintiff's marks. The court later granted WMCV’s preliminary injunction and denied a motion to dismiss filed by TIPA.

TIPA answered the complaint on June 19, 2009, and included six counterclaims each of which sought to cancel one of WMCV's federal or state trademarks. The Third counterclaim sought to cancel the mark LAS VEGAS FURNITURE MARKET (Note: the court’s opinion seems to mistakenly cite the registration number for this mark as 3,259,971, which is actually WMCV's federal registration for LAS VEGAS MARKET) and the Fourth and Fifth counterclaims sought to cancel LAS VEGAS DESIGN CENTER.

WMCV filed a Motion to Dismiss these counterclaims for lack of standing to request cancellation since WMCV has not claimed that TIPA is infringing these particular marks and because TIPA has claimed no interest in the marks beyond that of the general public nor has it claimed will be damaged by WMCV's registration of the marks. TIPA argued that WMCV “bestowed standing” upon TIPA to counterclaim to cancel these marks when WMCV included claims in its Complaint that it owned these other marks in connection with the mark that it claims TIPA infringed.

The court described the “real interest” that must be demonstrated in the pleadings in order for a party seeking to cancel a registered mark to have standing:

In order to have standing, petitioner for cancellation need not prove actual damage, but only the likelihood of damage from the continuing registration of the mark. 3 McCarthy, Trademarks § 20:46, at 20-109 (4th ed. 2009) (citing Golden Gate Salami Co. v. Gulf States Paper Corp., 332 F.2d 184, 188 (C.C.P.A. 1964)). There must be a “personal commercial interest, rather than the interest of a mere intermeddler.” Golden Gate Salami Co., 332 F.2d at 188. If a party claiming cancellation “does not plead facts sufficient to show a personal interest in the outcome beyond that of the general public, the case may be dismissed for failure to state a claim. Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1028 (C.C.P.A. 1982) (citing Sierra Club v. Morten, 405 U.S. 727 (1972)). A party attempting cancellation must “demonstrate a real interest in the proceedings.” Id. (citing Universal Oil Prods. Co. v. Rexall Drug & Chem. Co., 463 F.2d 1122 (C.C.P.A. 1972)). The Lipton court identified many contexts in which a real interest could be shown, supporting standing: importation of products deterred by a registration, use of copyrighted appearance of an item, pecuniary interest of trade association, prior registration but not priority in use, protection of subsidiary's mark, descriptive use of term in registered mark, and advertising emphasis of American origin. Id. at 1029 (citations omitted).

WMCV argued that TIPA’s counterclaims did not show how TIPA might plausibly be damaged by WMCV's registrations of the LAS VEGAS FURNITURE MARKET or LAS VEGAS DESIGN CENTER marks. TIPA attempted to argue that WMCV “bestowed standing on TIPA” by suing TIPA for infringement and listing those registered marks in the Complaint as marks that were being infringed by TIPA, and thus giving TIPA a “real interest” in the continued registration of the marks.

While the court acknowledged that TIPA was correct that being sued for infringement is sufficient to support standing for a counterclaim for cancellation, the court took the common sense approach in recognizing that, although WMCV included a list of World Market Center-related marks in its Complaint, “it is clear from the complaint identifying the allegedly infringing Domain Name which mark or marks were alleged to have been infringed.” The mere fact that such marks were listed in WMCV's Complaint against TIPA “is not enough to find that Plaintiff has claimed these marks are being infringed. Plaintiff has made no such claim. . . . TIPA's only claim to a real interest in the two marks mentioned in the Third, Fourth, and Fifth Counterclaims is based on having been sued over them.”

As such, the court found that TIPA did not have standing to counterclaim to cancel the LAS VEGAS FURNITURE MARKET or LAS VEGAS DESIGN CENTER marks that were the subject of TIPA’s Third, Fourth, and Fifth Counterclaims, and dismissed those counterclaims, with leave to amend. The court also granted WMCV’s request for leave to amend its complaint to remove references to the LAS VEGAS FURNITURE MARKET and LAS VEGAS DESIGN CENTER marks.

So is the lesson learned that plaintiff’s shouldn’t engage in a long listing of that clearly are not the basis for the alleged infringement? Likewise, should defendant’s not bother seeking to cancel registered marks that clearly are not the basis for the alleged infringement?

Local Las Vegas companies in a trademark feud over “Appliance Doctor”

The Las Vegas Sun ran a story today (link here) about a dispute between two appliance repair businesses in the Las Vegas valley using the name “Appliance Doctor” to identify their businesses.

Samuel and Mary Gravino, the owners of Applicance Doctor LLC, filed a lawsuit on Tuesday in Clark County District Court against a company operating as “The Appliance Doctor of Las Vegas” owned by Ken and Melissa Jagmin.

The Gravinos claim to have been using the name “Appliance Doctor” in Las Vegas for over 26 years. Of course, it wasn't until a little over a week ago on September 29, 2009, that their company actually registered APPLIANCE DOCTOR LLC as a trade name with the Nevada Secretary of State’s Office (claiming date of first use as October 2, 1989) for “appliance repairs” (of course, their Las Vegas Business license lists the date their business license was issued as October 23, 1989).

According to their complaint, the Gravinos claim to have been receiving calls from angry, disgruntled customers who believed that their company had provided services that it turns out were provided by “The Appliance Doctor of Las Vegas.” The Gravinos claim that the Jagmins, who received their business license on April 30, 2009, are trading off the name, reputation and goodwill that the Gravinos have established over the last 26 years.

When reached for comment, Mr. Jagmin stated that “Appliance Doctor” is commonly used by such companies around the nation and he’s unaware of any trademark covering the name.

A quick internet search does support Mr. Jagmin’s case about the term “Appliance Doctor” being commonly used in connection with appliance repair services. However, as for any trademark on the name, surprisingly, THE APPLIANCE DOCTOR and APPLICANCE DOCTOR are actually federally registered trademarks of a Wichita company named Appliance Doctor, Inc. Based on the widespread (but localized) use of “Appliance Doctor” it would appear that Appliance Doctor, Inc. has not done a very good job of enforcing its trademark rights nationwide. Of course, if it’s true that the Gravinos have been using the name APPLIANCE DOCTOR in the Las Vegas area for over 26 years – long before Appliance Doctor, Inc. received its first trademark registration in 1996– then they would have clear prior user rights to continue to use the name.

Mr. Jagmin also commented that his name was different than his competitor because it includes the phrase “of Las Vegas.” [Someone might want to explain to Mr. Jagmin that additional geographically descriptive words don’t really carry much weight in analyzing whether two marks are likely to cause confusion, especially when the services rendered by “Appliance Doctor” are in the Las Vegas area. I’m thinking about opening a competing hotel/casino called “Red Rock of Las Vegas” – no one would confuse that with “Red Rock” Hotel and Casino in Las Vegas, right?] Of course, Mr. Jagmin fails to mention that on the company's website, the logo (pictured below) is just “The Appliance Doctor” with the “of Las Vegas” used more in the text of the website.

I wonder if the Gravinos would have still claimed trademark infringement if the Jagmin’s had used “The Appliance Doc of Las Vegas.” Given the commonality of the phrase “Appliance Doctor” would use of just the shorthand “Doc” suffice to alleviate consumer confusion?