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Internet Trademark Case Summaries

Courtenay Communications Corp. v. Hall

2001 U.S. Dist. LEXIS 7717 (S.D.N.Y. June 14, 2001), 2001 WL 893863 (S.D. N.Y. Aug. 8, 2001) (motion for reconsideration), vacated and remanded, 334 F.3d 210 (2d Cir. 2003)

Plaintiff hired defendants as financial advisors for its “iMarketing News” publication.  As an example of their consulting services, the defendants posted plaintiff’s IMARKETING NEWS logo on their website along with anonymous statements that could be attributed to plaintiff’s owner.  Among other claims, plaintiff alleged false endorsement under Section 43(a) of the Lanham Act and sought a preliminary injunction to enjoin defendants from using the IMARKETING NEWS logo on their website.  The court granted defendants’ motion to dismiss on the ground that plaintiff’s mark IMARKETING was generic and thus not protectable.  The court found that the term “iMarketing” “refers to marketing on the internet,” and the addition of “News” merely described the class of periodicals within the marketing industry.  According to the court, “It would be hard to think of a name for a publication regarding internet marketing that more accurately described its contents than the name of the industry, ‘iMarketing’ plus the word ‘news.’”  Plaintiff’s use of the generic term “iMarketing” in a distinctive typeface and with a design element did not render its mark protectable.  The court denied plaintiff’s motion for reargument, finding that “the fact that the ‘i’ in plaintiff’s asserted mark . . . is printed in red surrounded by a yellow circular shape [is not] sufficient when added to a mundanely generic text in very ordinary typefaces to elevate that mark to protectable status.”

On appeal, the Second Circuit vacated the judgment and remanded the case.  First, the district court erred by failing to view plaintiff’s allegations in a light most favorable to plaintiff.  Specifically, plaintiff’s allegations—that it established iMarketing News as a trademark, that defendant’s use of the mark injured plaintiff, and that iMarketing News was associated with plaintiff’s publication—were sufficient to allege that the mark was distinctive (either inherently or through acquisition of secondary meaning).  Second, the district court engaged in premature fact-finding.  Specifically, the district court erred by not analyzing the IMARKETING NEWS mark as a whole.  According to the Second Circuit, “[E]ven if the words ‘iMarketing News’ are generic, [plaintiff] may nonetheless be entitled to trademark protection for its composite mark as a whole.”