Harp v. Rahme
984 F. Supp. 2d 398
E.D. Pa.2013Background
- Everlina Laurice Harp (Plaintiff) owns registered trademarks for EVERLINA LAURICE and LAURICE and has sold perfumes and related products since the 1990s.
- Defendant Laurice El Badry Rahme and her company have used the name/label “Laurice & Co.” on Bond No. 9 perfumes and registered a business name for Laurice & Co.; Rahme Ltd. once sought to register LAURICE but withdrew a cancellation petition.
- Plaintiff alleges Lanham Act trademark infringement, counterfeiting, dilution, Pennsylvania unfair competition, intentional interference with business relations, and civil conspiracy based on Defendants’ use of LAURICE/LAURICE & CO. and ownership of the domain lauriceco.com.
- Defendants moved for summary judgment, arguing no genuine dispute of material fact and that Laurice & Co. has been used as a trade name/label (not a trademark) and is not likely to cause confusion.
- The district court found the material factual record sparse but largely uncontested, examined the ten Lapp likelihood-of-confusion factors, and concluded Plaintiff failed to produce evidence sufficient to create a genuine issue on any claim.
- Court granted Defendants’ motion for summary judgment on all counts and denied Plaintiff’s cross-motion for summary judgment; case closed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Trademark infringement / unfair competition (likelihood of confusion) | Plaintiff: Defendants’ LAURICE & CO. use on perfumes will confuse consumers with Plaintiff’s EVERLINA LAURICE / LAURICE marks | Defendants: Marks are visually and commercially distinct; LAURICE & CO. used inconspicuously as a trade/business name; no likelihood of confusion | No likelihood of confusion; summary judgment for Defendants (all Lapp factors but product relationship weigh against Plaintiff) |
| Counterfeiting under Lanham Act | Plaintiff: Use of LAURICE & CO. is counterfeiting of registered mark | Defendants: No underlying infringement exists; no willful counterfeit use | Dismissed — Plaintiff cannot meet prima facie infringement element; summary judgment for Defendants |
| Federal trademark dilution (TDRA) | Plaintiff: Defendants’ use dilutes distinctiveness of Plaintiff’s marks | Defendants: Plaintiff’s marks are not ‘‘famous’’ nationwide as required | Dismissed — Plaintiff failed to show marks are famous; summary judgment for Defendants |
| Intentional interference / civil conspiracy (state law) | Plaintiff: Defendants’ mark and domain ownership diverted customers and damaged business relations | Defendants: No specific disrupted contracts or prospective relations; use lawful/business justification | Dismissed — Plaintiff offered no specific contractual/prospective relations or evidence of intent; summary judgment for Defendants |
Key Cases Cited
- Two Pesos, Inc. v. Taco Cabana, 505 U.S. 763 (U.S. 1992) (Lanham Act protects against deceptive use of marks)
- A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198 (3d Cir. 2000) (Lapp-factor framework and mark-similarity analysis)
- Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270 (3d Cir. 2001) (compare appearance, sound, meaning for similarity)
- Interpace Corp. v. Lapp Inc., 721 F.2d 460 (3d Cir. 1983) (origin of the ten Lapp likelihood-of-confusion factors)
- Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466 (3d Cir. 1994) (weighting Lapp factors in totality of circumstances)
- Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225 (3d Cir. 1978) (actual confusion requires evidentiary pattern; misdirected mail alone insufficient)