Lahoti v. Vericheck, Inc.
636 F.3d 501
9th Cir.2011Background
- Lahoti appeals district court remand findings that Vericheck's VERICHECK mark is distinctive and protectable under trademark law.
- On remand, the district court held the mark is suggestive, strong, and entitled to protection, and Lahoti violated the Lanham Act, ACPA, and WCPA.
- This court previously vacated and remanded because the district court erred in analyzing the mark's descriptiveness and component parts.
- The district court relied in part on the Arizona registration of a similar mark and on evidence of consumer perception and marketplace strength.
- Lahoti challenges the district court’s likelihood-of-confusion analysis, ACPA finding, WCPA finding, and attorneys’ fees awards.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether VERICHECK is distinctive | Lahoti contends the district court repeated errors in industry context analysis. | Vericheck argues the mark is suggestive and protected; district court properly applied remand directives. | Mark is distinctive; district court’s finding affirmed. |
| Likelihood of confusion between VERICHECK and www.vericheck.com | Domain and mark are confusingly similar; domain use should cause confusion. | Internet factors show confusion; other factors balance but overall confusion is likely. | Likelihood of confusion affirmed under Sleekcraft framework and internet trinity. |
| Application of the ACPA cybersquatting provision | Domain registration was in bad faith and identical or confusingly similar to a distinctive mark. | Lahoti engaged in cybersquatting and misappropriated traffic and revenue; bad faith shown. | Acypping domain registration in bad faith; ACPA violation affirmed. |
| Washington Consumer Protection Act (WCPA) violation | Infringement and public harm satisfy WCPA elements. | Infringement may be inadvertent or not public-interest conduct. | WCPA violation affirmed; public interest element satisfied by confusion and bad faith. |
Key Cases Cited
- Lahoti v. VeriCheck, Inc., 586 F.3d 1190 (9th Cir. 2009) (remand on descriptiveness; prior bad-faith finding)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (Supreme Court 1992) (descriptive vs. inherently distinctive marks)
- Pilot Corp. of Am. v. Fisher-Price, Inc., 501 F. Supp. 2d 292 (D. Conn. 2007) (example of suggestive marks and consumer perception)
- Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936 (9th Cir. 2002) (internet trinity factors for likelihood of confusion)
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (Sleekcraft likelihood-of-confusion framework)
- Earthquake Sound Corp. v. Bumper Indus., 352 F.3d 1210 (9th Cir. 2003) (exceptional case standards for attorney’s fees)
- Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400 (9th Cir. 1993) (bad-faith or intentional infringement considerations)
- Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998) (cybersquatting and domain-name related rights)