334 F. Supp. 3d 995
D. Me.2018Background
- Safeway Transit LLC (Silenko) operates party-bus services in the Twin Cities using the descriptive names/brands "Rent My Party Bus" (used since 2008) and "952 Limo Bus" (used since 2011), displayed on buses, domain names, and in online and print advertising. Safeway's use expanded and its fleet grew substantially by 2015.
- Defendants Discount Party Bus, Inc. and Party Bus MN LLC (DPB), owned by Adam Fernandez, previously used the terms on fliers before 2008 but discontinued use by 2009. Fernandez later registered assumed names and pursued state and federal trademark filings for the terms in 2014; those registrations were cancelled in 2016.
- In 2015 DPB hired a marketing firm (ILL) that placed the terms on a DPB website and social media, and Fernandez filed ICANN complaints seeking transfer of Safeway's domains. Safeway sued in 2015 for trademark infringement and related claims; partial settlement narrowed issues to federal infringement (Lanham Act § 1125(a)) and Minnesota deceptive trade practices.
- At bench trial the court found DPB abandoned any earlier rights by ceasing use no later than 2009, and that Safeway acquired secondary meaning in the descriptive marks before DPB's 2015 online uses.
- The court held DPB (and Fernandez personally) infringed Safeway's unregistered descriptive marks because DPB used the marks in commerce in a manner likely to cause confusion, and entered a permanent injunction prohibiting DPB/Fernandez from using the marks, keywords, domain names, or hashtags.
- The court denied Safeway's requests for an accounting of profits and for attorney fees, finding an injunction adequate and that the case was not "exceptional" for fee-shifting purposes.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Safeway's unregistered descriptive marks acquired secondary meaning before the alleged infringement | Safeway: continuous, substantially exclusive use (domains, decals, advertising, social media, fleet growth) created consumer association with Safeway | DPB: earlier (pre-2008) use and lack of direct survey evidence mean no secondary meaning for Safeway | Held: Safeway proved secondary meaning by preponderance for both marks (Rent My Party Bus earlier; 952 Limo Bus later) because of continuous exclusive use, advertising, use on buses/domains, and growth |
| Whether DPB abandoned any prior rights and thus was not senior user | Safeway: DPB abandoned marks by ceasing use by 2009, allowing Safeway to acquire rights | DPB: prior use made it senior; its later filings reflect rights | Held: DPB abandoned the marks no later than 2009 and was not the senior user during the infringement period |
| Whether DPB used the marks in commerce in a manner likely to cause confusion | Safeway: DPB’s ILL-created website, URLs, page text, hyperlinks, and social posts used the marks and targeted search placement, creating likelihood of confusion | DPB: uses were minor/not on main site; earlier use by DPB and settlement context mitigate confusion | Held: DPB used the marks in commerce and the SquirtCo factors show likelihood of confusion; overall likelihood found |
| Remedies: entitlement to injunction, profits, and attorney fees | Safeway: seeks permanent injunction, disgorgement of DPB profits, and attorney fees | DPB: contends remedies should be limited; argues its conduct not willful | Held: Permanent injunction granted; accounting of profits and attorney fees denied (injunction sufficient; case not "exceptional") |
Key Cases Cited
- DaimlerChrysler AG v. Bloom, 315 F.3d 932 (8th Cir. 2003) (state-law trademark claim coextensive with Lanham Act claim)
- Stuart Hall Co. v. Ampad Corp., 51 F.3d 780 (8th Cir. 1995) (secondary meaning requires consumer association of mark with a single source)
- Co-Rect Prods., Inc. v. Marvy! Advertising Photography, Inc., 780 F.2d 1324 (8th Cir. 1985) (factors for proving secondary meaning and limits of self-serving testimony)
- Heartland Bank v. Heartland Home Fin., Inc., 335 F.3d 810 (8th Cir. 2003) (courts may infer secondary meaning from advertising, long-term usage, and sales volume absent direct proof)
- Hana Fin., Inc. v. Hana Bank, 135 S. Ct. 907 (U.S. 2015) (rights in a trademark determined by first use in commerce)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (U.S. 1992) (continuous exclusive use as strong evidence of distinctiveness/secondary meaning)
- SquirtCo v. Seven-Up Co., 628 F.2d 1086 (8th Cir. 1980) (multi-factor likelihood-of-confusion test)
- Cmty. of Christ Copyright Corp. v. Devon Park Restoration Branch of Jesus Christ's Church, 634 F.3d 1005 (8th Cir. 2011) (listing factors for permanent injunction and likelihood-of-confusion analysis)
- Minn. Pet Breeders, Inc. v. Schell & Kampeter, Inc., 41 F.3d 1242 (8th Cir. 1994) (injunction preferred Lanham Act remedy; accounting may be denied if injunction suffices)
- Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (U.S. 2014) (standard for awarding attorney fees in "exceptional" cases)