195 F. Supp. 3d 818
E.D. Va.2016Background
- Select Auto Imports (Plaintiff) has used the SELECT AUTO IMPORTS mark in the Washington, D.C. metro area since at least 1987 and owns an incontestable federal registration for SELECT AUTO IMPORTS covering an automobile dealership.
- Yates Select Auto Sales (Defendant), formed in 2014 by Jeffrey L. Yates, began using the name YATES SELECT AUTO SALES and related logos online and on signage in early 2015 to operate a nearby used-car dealership (within ~4 miles).
- Plaintiff sent a cease-and-desist letter (Feb. 2015); Defendants continued use and launched a website and signage; Plaintiff sued in May 2015 alleging federal and state trademark infringement and unfair competition.
- The parties sell substantially similar goods (used domestic and imported/luxury cars), advertise through largely overlapping channels (websites, social media, signage), and target the same local consumer base.
- The court found at least three documented incidents of actual consumer confusion and numerous factors (including Defendants’ knowledge of Plaintiff and logo similarity) indicative of likely confusion.
- Court concluded all nine Fourth Circuit likelihood-of-confusion factors favored Plaintiff or were neutral and entered a permanent injunction requiring Defendants to cease use of YATES SELECT AUTO SALES and confusingly similar marks/domain names and to destroy related materials.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Defendants’ use of YATES SELECT AUTO SALES is likely to cause consumer confusion under the Lanham Act and state/common law | Select’s registered, commercially strong mark (SELECT AUTO IMPORTS) and Defendants’ similar mark, overlapping goods, proximity, similar advertising, actual confusion, and Defendants’ knowledge create likelihood of confusion | Yates contended his use was a family house mark (Yates), he selected “Select” for descriptive reasons (quality of selection), and had no intent to copy; no federal registration for defendant | Court held likelihood of confusion established under Ninth-Factor (Fourth Circuit) test; granted permanent injunction prohibiting use of YATES SELECT AUTO SALES and confusingly similar marks/domain names |
Key Cases Cited
- George & Co., LLC v. Imagination Entm’t Ltd., 575 F.3d 383 (4th Cir. 2009) (articulates the Fourth Circuit nine-factor likelihood-of-confusion test)
- Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005) (elements for Lanham Act trademark/false designation claims)
- Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455 (4th Cir. 1996) (distinction among suggestive, descriptive marks and secondary meaning)
- Pizzeria Uno Corp. v. Temple, 747 F.2d 1522 (4th Cir. 1984) (protection accorded suggestive marks and analysis of dominant mark elements)
- Synergistic Int’l, LLC v. Korman, 470 F.3d 162 (4th Cir. 2006) (no single likelihood-of-confusion factor is dispositive)
- Emergency One, Inc. v. American Fire Eagle Engine Co., 332 F.3d 264 (4th Cir. 2003) (limitations on geographic scope of injunctive relief despite nationwide registration)