Tuesday, October 23, 2007

NuVision’s Trademark Infringement Dispute with Panasonic over HIGH DEFINITION LIVING

Several news stories ran today (here, here, here) after NuVision U.S., Inc. (“NuVision”) issued a press release on Monday publicizing that it had filed a trademark infringement lawsuit against Panasonic Corporation of North America ("Panasonic") on October 8, 2007, in the U.S. District Court for the District of Arizona. See NuVision USA [sic], Inc. v. Panasonic Corporation of North America, Case No. 2:2007cv01916 (D. Ariz.).

NuVision produces custom high definition home entertainment systems. According to NuVision, since the company’s inception in 2005, it has been using the mark “High Definition Living” in connection with its customer home theater systems. NuVision filed a Section 1(a) use-in-commerce application on December 7, 2006, to register the mark HIGH DEFINTIION LIVING (for home theatre products) claiming first use in commerce on March 2, 2005. The mark was registered on October 9, 2007 (“high definition” disclaimed).

At issue is a new program announced by Panasonic on August 1, 2007 (press release here) named “Living in High Definition.” Panasonic describes the program as one that will explore how the latest High Definition television and video technologies can enrich the American lifestyle. Panasonic plans to choose 30 families to live with $20,000 worth of High Definition consumer electronic products, who will be asked to record their experiences with the HD products (using, of course, high-def video recorders), the footage of which will be broadcast online and later incorporated into a documentary. Panasonic is using the program to help study and understand how families change when exposed to these HD products.

In response to the lawsuit, and coincidentally on the same day that NuVision issued its press release (October 22, 2007), Panasonic filed a cancellation proceeding with the Trademark Trial and Appeals Board. See Panasonic Corporation of North America v. NuVision U.S., Inc., Cancellation No. 92048285. Panasonic’s argument for cancellation of NuVision’s HIGH DEFINITION LIVING mark is that “high definition” is merely descriptive of the nature of the goods covered by the registration and the word “living” in such context refers to the lifestyle of the users of NuVision’s products. Citing several internet articles discussing “high definition (or HD) living,” Panasonic argues that the composite mark of “high definition” with “living” is descriptive as describing a lifestyle which incorporates the use of high definition consumer electronics. In other words, Panasonic is arguing that NuVision’s combination of descriptive terms does not evoke a new and unique commercial impression, and instead each component retains its descriptive significance in relation to the goods or services, and thus the combination is itself a descriptive composite. See MPEP 1209.03(d).

Vegas™Esq Comment:
I’m a little surprised that Panasonic is going through the trouble of pursuing a cancellation of the mark rather than just changing the name of its “program.” Some alternative titles that I think work just as well -- “Living in the World of High Definition” or “Life in High Definition.” Unless, of course, Panasonic was planning on using the “Living in High Definition” as a future marketing slogan in conjunction with its consumer electronic products. Or maybe the amount of money Panasonic had invested in the name so far is substantial enough that it was cheaper to file the cancellation in order to get some leverage against NuVision so that a co-existence agreement can be negotiated. Or maybe Panasonic does not want to be prevented from using what it believes is a common phrase in its future marketing efforts.

I’m also a little surprised that NuVision believes that there is a strong enough likelihood of confusion between its registered mark and Panasonic’s program to obtain relief in federal court. The company cannot deny that “High Definition” is generic (it had to disclaim the words for its own registration). And while Panasonic’s placement of the word “Living” does not necessarily make it dissimilar enough to overcome a likelihood of confusion, when the dissimilarity is analyzed in conjunction with the goods/services at issue, it seems less likely that consumers of such high-end electronics would confuse NuVision’s HIGH DEFINITION LIVING custom home theatre products with Panasonic’s study of families “Living in High Definition.”

One would think that NuVision would have a greater problem with the trademark registration held by Avodah Publishing, Inc. for HIGH DEFINTION LIVING for magazines (registered January 9, 2007, ITU application filed April 19, 2005, first use in commerce July 17, 2005) (“Living” disclaimed). Of course, the fact that Avodah is not currently publishing a magazine under such a name may explain any lack of concern on NuVision’s part. Instead, Avodah is publishing a magazine named HDTV Etc. (which if it were called HIGH DEFINITION LIVING would seem to cause a greater likelihood of confusion than Panasonic's propose name).

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