Mazelmints, Inc. v. It's A Wrap LLC
1:10-cv-01117
E.D. Va.Jul 20, 2011Background
- Plaintiff Mazelmints, Inc. owns ENGAGEMINTS and ANNOUNCEMINTS marks with registrations 3,066,429 and 3,343,028 (class 6 and 30).
- Defendants It's A Wrap, LLC and Jannette Burns marketed and sold mint tins under ENGAGE-MINTS/ANNOUNCE-MINTS via a website and partners.
- Plaintiff used ENGAGEMINTS for mint containers and candy since 2005; Plaintiff's marks are valid and protected.
- Defendants began selling under ENGAGE-MINTS in late 2008; no affiliation with Mazelmints during that period.
- Plaintiff issued a cease-and-desist around August 2010; Burns removed some references but not all metadata.
- Court held liability for infringement and awarded damages of $670.42, and enjoined further use of ENGAGEMINTS/ ANNOUNCEMINTS.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether defendants infringed the plaintiff's marks | Mazelmins argues ENGAGE/MINTS misleads consumers | It's A Wrap asserts no likelihood of confusion | Yes, infringement established |
| Whether there was likelihood of confusion under Lanham Act and Virginia law | Marks are distinctive and similar to ENGAGEMINTS | Differences and lack of intent weaken confusion claim | Likelihood of confusion shown; infringement found |
| What damages remedy is appropriate | Seeking disgorgement or damages for lost sales | Only actual profits should be attributed, no enhanced damages | Damages equal to defendants' profits; no enhanced damages |
| Whether an injunction is appropriate | Injunction needed to prevent ongoing harm | Injunctive relief unnecessary for past harm | Permanent injunction against further use of marks |
| Whether attorney's fees are warranted | Exceptional case due to willful infringement | No willful infringement; defensive conduct | No attorney's fees awarded |
Key Cases Cited
- Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922 (4th Cir. 1995) (five-factor framework for likelihood of confusion)
- Pizzeria Uno Corp. v. Temple, 747 F.2d 1522 (4th Cir. 1984) (multifactor test for likelihood of confusion)
- Synergistic Intern., LLC v. Korman, 470 F.3d 162 (4th Cir. 2006) (damages factors in Lanham Act cases; weigh equities)
- Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005) (likelihood of confusion; but not explicit in this summary)
- George & Co. LLC v. Imagination Entertainment Ltd., 575 F.3d 383 (4th Cir. 2009) (evidence of actual confusion may be de minimis)