Internet Trademark Case Summaries

FragranceNet.com, Inc. v. Les Parfums, Inc., et al.

2009 WL 4609268 (E.D.N.Y. Dec. 8, 2009)

Plaintiff FragranceNet.com, Inc. (“FragranceNet”) operated an online retail store selling perfume and related products at www.fragrancenet.com since 1997, and owned the federally registered marks FRAGRANCENET and FRAGRANCENET.COM.  Defendants, which also sold perfumes and fragrances online, purchased and used keywords through Google’s AdWords program.  When a consumer entered “fragrancenet,” “fragrancenet.com,” or other variations of FragranceNet’s registered marks into the Google search engine, links to defendants’ websites appeared as “Sponsored Links” on top and on the right side of the search results page.  FragranceNet demanded that defendants discontinue their use of the FragranceNet marks, and requested that defendants bid on the marks to be a “negative match” so that their links would not appear as results when consumers searched for FragranceNet on Google.  Defendants refused both requests.  FragranceNet sued for trademark infringement and dilution, among other claims.  Defendants filed a motion to dismiss FragranceNet’s complaint, claiming that FragranceNet’s registered marks were generic and thus not protectable.  The district court denied defendants’ motion.  The court acknowledged that a generic word cannot be registered as a trademark, but noted that registered trademarks like FragranceNet’s are presumed not to be generic and the party challenging the registered mark’s validity must present sufficient evidence of the mark’s invalidity (e.g., consumer surveys, consumer or trade professional testimony, dictionary definitions, uncontested use of the mark by competitors to describe their products, generic use of the term by the mark’s owner, and/or use of the term in third-party trademark registrations).  Defendants, however, did not submit any such evidence, and the court stated that it was simply too early in the case to determine whether FragranceNet’s marks were generic.  It also noted that the proper inquiry on a motion to dismiss is “not whether a plaintiff will ultimately prevail, but whether the claimant is entitled to offer evidence to support the claims.”  According to the court, FragranceNet asserted plausible claims in its complaint sufficient to survive the motion to dismiss.  The court also declined to convert the motion to dismiss into a motion for summary judgment because defendants did not submit any evidence to rebut the presumption that FragranceNet’s registered marks were valid and not generic.  Further, even if defendants had submitted evidence, summary judgment was inappropriate because both parties needed to be able to conduct discovery.  The court noted that its conclusion was consistent with the decisions of numerous other courts holding that the determination of whether a mark is generic cannot be decided at the motion-to-dismiss stage.  Moreover, neither party was aware of any case in the Second Circuit where a court, without any evidentiary record, dismissed a trademark claim on a motion to dismiss on the ground that a registered trademark was generic as a matter of law.