832 F. Supp. 2d 380
D.N.J.2011Background
- Fan-caster and Comcast dispute over FANCAST vs fancaster marks in Lanham Act and NJ law; Fancaster alleges infringement, misappropriation, unfair competition, and domain-related relief; Comcast asserts counterclaims including fraud on PTO and cyber piracy; FANCAST launched 2006-2008, later replaced by Xfinity TV, with no user-generated content on FANCAST; substantial advertising by Comcast for FANCAST; multiple domain registrations by Fancaster/Krueger; court granted partial SJ and in limine, denied some elements, and dismissed several claims with prejudice
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion between FANCAST and fancaster | Fancaster argues reverse confusion due to Comcast’s market power | Comcast contends marks are dissimilar and not likely to confuse | No likelihood of confusion; reverse confusion weighs against Fan-caster |
| Corrective advertising damages | Fan-caster seeks damages for corrective advertising | No proven damage or causation; no suitable basis | Damages for corrective advertising dismissed |
| Fraud on the Patent and Trademark Office (§1120) | Fan-caster contends Comcast cannot show intent to defraud | Comcast argues pre-registration uses show intent to deceive | Fan-caster’s SJ granted; fraud not established; no clear evidence of scienter |
| Declaratory judgment of cancellation/non-use | Comcast seeks invalidity or non-use declaration | Duplicative, or lacking sufficient evidence | Dismissed as duplicative or unsupported |
| Cyber piracy (ACPA) viability | Comcast domain registrations infringed FANCAST; bad faith implied | ACPA factors not clearly proven; safe harbor and evidentiary issues | Cyber piracy claim survives; other aspects unresolved; proceed |
Key Cases Cited
- Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983) (ten-factor Lapp test for likelihood of confusion)
- Fisons Horticulture Inc. v. Vigoro Indus., Inc., 30 F.3d 466 (3d Cir. 1994) (reverse confusion framework; factor adjustments)
- Freedom Card, Inc. v. JPMorgan Chase & Co., 432 F.3d 463 (3d Cir. 2005) (reverse confusion factors tailored to market power)
- A & H Sportswear Co. v. Victoria's Secret Stores, Inc., 237 F.3d 198 (3d Cir. 2001) (strength of marks; descriptive vs. suggestive vs. arbitrary)
- CBS Holdings, LLC v. Optimum Networks, Inc., 731 F. Supp. 2d 400 (D.N.J. 2010) (incontestability and strength considerations in trademark)