112 F. Supp. 3d 627
N.D. Ohio2015Background
- Plaintiff DISH Network owns the vanity customer-service number 1-800-333-DISH (1-800-333-3474) and federally registered the mark "DISH."
- Defendants (Dish 1 Up, Fun Dish, Inc., Fun Dish of Florida) own and used similar toll-free numbers (e.g., 1-888-333-3474, 1-866-333-3474) and answered misdials directed to DISH Network.
- Plaintiff alleges Lanham Act unfair competition and trademark infringement, Ohio deceptive trade practices and common-law claims, and alleges Defendants misrepresented affiliation to redirect customers to DirecTV.
- Defendants counterclaimed seeking cancellation of DISH registrations as generic or merely descriptive and raised laches/acquiescence defenses; some counterclaims (Sherman Act, tortious interference) were previously dismissed.
- Defendants moved for summary judgment arguing (1) "DISH" is generic/without secondary meaning; (2) using similar phone numbers without using the mark is not infringement under Sixth Circuit precedent; and (3) Plaintiff unreasonably delayed (laches/acquiescence).
- The court earlier found as a matter of law that Defendants made material misrepresentations and used Plaintiff's stylized mark on their website after termination of the retailer agreement (resolving liability on certain counts).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether ownership/use of phone numbers similar to 1-800-333-DISH constitutes Lanham Act trademark infringement | Use of similar numbers caused consumer confusion and aided Defendants in diverting customers | Mere ownership/use of similar numbers (without using the word "DISH" in advertising) is not "use" of the mark and does not create Lanham Act liability | Court: Granted summary judgment to Defendants on federal Lanham Act infringement claim based on phone-number use (Count VII); similarly granted summary judgment on Ohio common-law trademark claim (Count VIII) relying on Holiday Inns/related precedent |
| Whether the registered "DISH" mark is generic or lacks secondary meaning (challenge to validity) | DISH is distinctive and has acquired secondary meaning before defendants’ use; survey evidence supports non-genericness | The term "dish" is generic/descriptive for satellite services; third-party use and prior disclaimers show lack of distinctiveness/secondary meaning | Court: Denied Defendants summary judgment on cancellation/invalidity counterclaim (Count I); genuine factual disputes (survey/expert credibility) preclude ruling |
| Whether Defendants are entitled to summary judgment on claims that do not depend on the validity of the DISH mark (misrepresentations, deceptive practices, use of stylized mark) | Counts I–VI rest on Defendants' misrepresentations to misdialed callers and use of stylized marks; validity of the vanity-number trademark is not dispositive | Defendants argued laches/acquiescence and that many claims depend on mark validity | Court: Denied summary judgment to Defendants on Counts I–VI; earlier ruling found material misrepresentations and continued use of Plaintiff's stylized mark, so these claims survive |
| Whether laches/acquiescence bars Plaintiff’s claims | Plaintiff timely sued within statutes; delay partly due to Defendants' undisclosed relationships and authorized retail status of Dish 1 Up until 2007 | Defendants argued Plaintiff waited years after learning of the numbers and therefore is barred by laches/acquiescence | Court: Rejected defendants’ laches/acquiescence defense as to Counts I–VI given those claims do not rely on the contested trademark validity and based on factual record |
Key Cases Cited
- Holiday Inns, Inc. v. 800 Reservation, Inc., 86 F.3d 619 (6th Cir. 1996) (ownership/use of phone numbers similar to a vanity number without use/advertising of the trademark does not constitute Lanham Act infringement)
- Taubman Co. v. Webfeats, 319 F.3d 770 (6th Cir. 2003) (registration/ownership of domain names containing a mark does not automatically create liability absent use/advertising that causes confusion)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (classifies mark distinctiveness spectrum and explains inherent protectability)
- Champions Golf Club, Inc. v. The Champions Golf Club, Inc., 78 F.3d 1111 (6th Cir. 1996) (distinguishes generic vs. descriptive marks and explains secondary meaning standard)
- Celotex Corp. v. Catrett, 477 U.S. 317 (1986) (summary judgment standard: burden on movant to show no genuine dispute of material fact)