Gameologist Group, LLC v. Scientific Games International, Inc.
838 F. Supp. 2d 141
S.D.N.Y.2011Background
- Plaintiff Gameologist holds registrations for BLING BLING 2002 for online casino games and board games; registrations do not cover lottery tickets.
- McGill developed the Bling Bling concept in 1998; later assigned ITUs to Gameologist in 2005; 2010 registration covers casino games and board games.
- MDI Entertainment licensed the mark for lottery tickets in 2003; license canceled in 2004 amid disputes about industry interest.
- Defendants Scientific Games and its subsidiary MDI produced and sold lottery tickets using the term ‘bling’ years after the license ended, including several named tickets (Georgia, New Hampshire, Kentucky, New Mexico, DC).
- Plaintiff alleges trademark infringement, false designation, unfair competition, and related state-law claims; defendant moves for summary judgment under Rule 56.
- Court analyzes use in commerce, likelihood of confusion, and other Polaroid factors; finds plaintiff’s mark not protectable for lottery use and unlikely to confuse consumers; grants summary judgment for defendants on all claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Validity and protectability of BLING BLING 2002 | Plaintiff argues a valid, protectable mark for lottery use by registration and use. | Registration covers limited goods; no use in commerce for lottery tickets; mark not protectable for lottery. | Plaintiff's mark not protectable for lottery; registration scope limits protection. |
| Likelihood of confusion between plaintiff's mark and defendants' lottery marks | Defendants’ use of ‘bling’ in lottery tickets mirrors plaintiff's mark and could confuse. | Marks are visually and contextually dissimilar; products target different markets; consumers are sophisticated. | Polaroid factors favor defendants; no likelihood of confusion. |
| Lanham Act false advertising claim | Defendants’ lottery advertising misleads about origin/ownership of marks. | No actual deception or likelihood of confusion; ads not inherently false. | No evidence of deception; false advertising claim dismissed. |
| New York common law unfair competition and passing off | Unfairly exploited plaintiff’s mark and good will. | No likelihood of confusion and no misappropriation. | Claims dismissed due to lack of likelihood of confusion. |
| Breach of contract / unjust enrichment / quantum meruit against defendants | Defendants became successors or benefited from MDI license; breach occurred. | Defendants were not party to the MDI license; veil piercing not shown; no quasi-contract basis. | No party to contract; claims of breach, unjust enrichment, and quantum meruit dismissed. |
Key Cases Cited
- Sports Auth., Inc. v. Prime Hospitality Corp., 89 F.3d 955 (2d Cir. 1996) (likelihood of confusion framework)
- Morningside Grp. Ltd. v. Morningside Capital Grp., L.L.C., 182 F.3d 133 (2d Cir. 1999) (requires valid mark and likely confusion for infringement)
- Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961) (eight-factor test for likelihood of confusion)
- Centaur Commc’ns, Ltd., 830 F.2d 1222 (2d Cir. 1987) (Centaur factors for secondary meaning)
- Time, Inc. v. Petersen Publ’g Co. L.L.C., 173 F.3d 113 (2d Cir. 1999) (secondary meaning and strength considerations)
- Gruner + Jahr USA Publ’g v. Meredith Corp., 991 F.2d 1072 (2d Cir. 1993) (concept of mark strength and secondary meaning)
- Arrow Fastener Co., Inc. v. Stanley Works, 59 F.3d 384 (2d Cir. 1995) (Polaroid factor guidance; nonexclusive factors)
- New York Stock Exchange, Inc. v. New York, New York Hotel, LLC, 293 F.3d 550 (2d Cir. 2002) (likelihood of confusion; sophisticated buyers' impact)
- Major League Baseball Props. v. Opening Day Prods.,, 385 F. Supp. 2d 256 (S.D.N.Y. 2005) (price and market considerations in proximity)