Safeway Transit LLC v. Discount Party Bus, Inc.
0:15-cv-03701
| D. Minnesota | Jul 31, 2017Background
- Safeway Transit LLC (Silenko) and Discount Party Bus/Party Bus MN (Fernandez) are competing Twin Cities party-bus companies. Dispute centers on three descriptive marks/phrases: “Rent My Party Bus,” “952 LIMO BUS,” and “Party Bus MN,” and the domain rentmypartybus.com.
- Plaintiffs bought the domains rentmypartybus.com and partybusmn.com in 2008, used social media and some on-vehicle markings; they never federally or state-registered the marks.
- Defendants claim prior use of the same phrases in the mid-2000s, later formed Party Bus MN LLC (May 1, 2014), and applied for state and federal registrations in late 2014–2015; ICANN panel awarded rentmypartybus.com to Defendants and denied 952limobus.com.
- Plaintiffs sued for trademark infringement under 15 U.S.C. § 1125(a) and for restoration of domain under 15 U.S.C. § 1114(2)(D)(v); Plaintiffs moved for partial summary judgment on infringement and domain claim and sought disgorgement of Defendants’ revenues.
- Magistrate Judge Bowbeer recommended denial of Plaintiffs’ partial summary judgment motion, finding genuine disputes of material fact on secondary meaning, priority, and intent; also ruled the record insufficient to award disgorgement and that Plaintiffs’ domain claim was inadequately briefed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether each asserted descriptive term acquired secondary meaning (protectable common-law mark) | Safeway: long and exclusive use since 2008/2011 created secondary meaning for each term, so Defendants’ later use causes infringement | Fernandez: prior use in 2004–2009 (and trademark applications/ICANN filings) shows competing priority or descriptive fair use; did not confess Plaintiffs’ exclusive association | Denied — genuine factual disputes exist about priority, exclusivity, extent of advertising/use, and whether consumers associated marks with Plaintiffs by the time of alleged infringement |
| Whether Defendants’ internet/social media use created a likelihood of confusion under § 1125(a) | Safeway: identical marks, same market, and admissions by Defendants on likely confusion support liability | Defendants: their use was descriptive/fair use or prior trademark use, and they did not act to pass off Plaintiffs’ business | Denied — likelihood-of-confusion depends on secondary-meaning and intent facts for jury; issues remain (strength, intent, actual confusion) |
| Whether Defendants’ use qualifies as the affirmative fair‑use defense | Safeway: Defendants’ actions indicate source-identifying use, not fair descriptive use | Defendants: website keywords and social posts were descriptive; not intended as trademark use | Court: fair-use not pled as affirmative defense (waived); factual record (registrations, ads, keywords) undermines purely descriptive claim — unresolved fact issues mean summary judgment inappropriate |
| Entitlement to disgorgement of Defendants’ revenues/profits | Safeway: if infringement found, Plaintiffs entitled to Defendants’ profits; defendants cannot prove deductible costs so full revenues appropriate | Defendants: revenues, costs, and willfulness are disputed; tax returns and testimony conflict | Denied at summary judgment — record insufficient to resolve willfulness, other equitable factors, or to calculate profits; Plaintiffs’ revenue estimates unreliable |
Key Cases Cited
- Anderson v. Liberty Lobby, 477 U.S. 242 (summary judgment standard; credibility and jury role)
- Two Pesos, Inc. v. Taco Cabana, 505 U.S. 763 (unregistered marks and protectability principles)
- KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (fair-use as affirmative defense in trademark law)
- SquirtCo v. Seven‑Up Co., 628 F.2d 1086 (Eighth Circuit likelihood-of-confusion factors)
- Heartland Bank v. Heartland Home Finance, Inc., 335 F.3d 810 (secondary meaning can be shown circumstantially)
- Everest Capital Ltd. v. Everest Funds Mgmt., L.L.C., 393 F.3d 755 (SquirtCo factors restated)
- Tonka Corp. v. Tonka‑A‑Phone, Inc., 805 F.3d 793 (plaintiff proves sales; defendant must prove deductible costs for disgorgement)
- JDR Indus., Inc. v. McDowell, 121 F. Supp. 3d 872 (secondary-meaning timing and evidentiary burdens)