USING AN IDENTICAL MARK MAY NOT BE A TRADEMARK INFRINGEMENT
March 17, 2021
WHEN IS USING THE IDENTICAL MARK AS SOMEONE ELSE NOT A TRADEMARK INFRINGEMENT?
By: Milton Oliver
America’s commercial capitol, New York City, is composed of five boroughs or counties. In the summer of 2012, a company in the borough of the Bronx began using the mark REPLY ALL to provide social network services. Its company name was Reply All Corporation. Two years later, in 2014, a different company in the borough of Brooklyn, Gimlet Media, began using the mark REPLY ALL for the service of providing podcasts on the subject of the internet. Eventually, Reply All Corp. sued Gimlet Media alleging trademark infringement. Who do you think came out on top in this dispute? The answer, and the reasons why, may surprise you.
After achieving registration of their mark, some trademark owners assume the registration gives them exclusive rights to the mark in every field of business. But the reality is more complicated, and the outcome of a particular dispute generally depends on the specific facts involved. In this case, the facts could lead to a conclusion that the mark of the defendant (here Gimlet Media) for defendant’s products either is, or is not, “confusingly similar” to the mark of the plaintiff (here Reply All Corp. or RAC) for plaintiff’s products.
The Spectrum Of Distinctiveness
In determining this, two important considerations are (A) the distinctiveness of the mark being asserted and (B) the history of what has happened in the real-world marketplace. When evaluating a word or phrase as a trademark, there is a so-called “spectrum of distinctiveness” with four categories, from least to most distinct:
Generally, the more distinctive the mark is, the broader the scope of protection will be. Out in the market, if there are similar marks for similar goods and services, this tends to narrow the scope of protection. Extensive use of a mark, over multiple years, tends to make a mark stronger and more recognized by customers and potential customers. Even a mark which started out in the “descriptive” category can “acquire distinctiveness” when a high percentage of customers have seen it advertised and recognize it.
The Polaroid Factors
An important 1961 trademark decision by the U.S. Court of Appeals for the Second Circuit, Polaroid v. Polarad Electronics, set forth 8 factors which must be considered when deciding whether or not, in a particular situation, there is a “likelihood of confusion”:
(1) the strength of the plaintiff’s mark;
(2) the degree of similarity between the two marks;
(3) the proximity of the products;
(4) the likelihood that the owner will bridge the gap;
(5) evidence of actual confusion;
(6) defendant’s good faith in adopting the mark;
(7) the quality of defendant’s product; and
(8) the sophistication of the buyers in the relevant market
In the present RAC vs. Gimlet Media case, the U.S. District Court for the Southern District of New York considered these 8 factors, and granted summary judgment for Gimlet Media, concluding that Gimlet Media’s use of REPLY ALL for podcasts was NOT likely to cause confusion with RAC’s use of REPLY ALL for its social networking services. The losing party, RAC, appealed to the U.S. Court of Appeals for the Second Circuit.
The Second Circuit concluded that the District Court was correct in its evaluation of the 8 Polaroid factors in this case. The phrase “reply all” is familiar to everyone who uses email because the phrase typically appears at the top of every email that someone opens. As a mark, it is “suggestive but weak in the market for computer services.” The history showed that RAC’s “lack of sales, marketing expenditures, and general absence from the marketplace” all suggest that RAC’s mark has acquired little or no distinctiveness in the marketplace. In other words, RAC started by picking a weak mark and failed to do enough marketing to strengthen the mark or build customer recognition.
The Second Circuit recognized that the spelling and pronunciation of REPLY ALL as used by RAC and as used by Gimlet Media were identical. However, the contexts of use of the marks differed; customers would hear Gimlet’s REPLY ALL mark mainly just when listening to one of Gimlet’s podcasts, while other customers would encounter the RAC REPLY ALL mark on RAC’s own website or “on third-party websites, potentially alongside other companies’ marks.” When the “channels of trade” where customers see two marks differ, the two marks are not considered “identical” even when the spellings are identical.
The fifth Polaroid factor is how much “actual confusion” there is in the marketplace. The District Court and the Second Circuit concluded that no survey evidence was presented, and that RAC came up with “only a handful” of instances of actual confusion. This was not enough to persuade that there was a “likelihood” of confusion.
The eighth and last Polaroid factor is the sophistication of the customers. When customers are more knowledgeable about the products of the parties and the companies which make the products, the customers are less likely to be confused, meaning that the government and the courts do not need to intervene in order to avoid possible confusion.
The Second Circuit concluded, “[e]xamining all of the Polaroid factors as a whole, we hold that no reasonable jury could have concluded that RAC’s customers are likely to be confused by Gimlet’s use of its REPLY ALL mark.” Therefore, it affirmed what the District Court did, when it granted summary judgment that Gimlet Media did not infringe RAC’s trademark.
What is the take-away from this decision? When picking a mark for a new product or service, do enough investigation to satisfy yourself that you are selecting as distinctive and memorable a mark as you can. Seek registration promptly. Advertise the new product or service extensively enough to build customer recognition. Finally, stay alert about what competitors are doing, and be prepared to “police” your mark against anyone infringing your registration.
 REPLY ALL CORPORATION, Plaintiff-Appellant, vs. GIMLET MEDIA LLC, Defendant-Appellee. Case No. 20-952-cv, decided FEB. 19, 2021 by the US Court of Appeals for the Second Circuit, affirming a Summary Judgment rendered by the US District Court for the Southern District of New York (William F. Kunze II, Judge)