Internet Trademark Case Summaries
Katz v. Modiri
283 F. Supp. 2d 883 (S.D.N.Y. 2003)
Plaintiff owned Juva MediSpa, a spa offering cosmetic surgery, skin-care services, and other high-end health-spa services. Plaintiff owned federal registrations for the marks JUVA and MEDISPA and operated a website at the domain name “juvaskin.com.” Defendant later opened the Juvenex Spa, which offered various spa treatments focusing on Asian remedies, and operated a website at “juvenexspa.com.” The court denied plaintiff’s motion for a preliminary injunction on its claims of federal and state trademark infringement and state dilution. Regarding plaintiff’s infringement claims, although plaintiff’s JUVA mark was relatively strong and the parties offered identical or closely related services, the following likelihood-of-confusion factors favored defendant: (1) the parties’ overall marks JUVA and JUVENEX were different, the parties used very different logos, and plaintiff always used JUVA with the term MEDISPA to identify the “Juva MediSpa”; (2) defendant adopted its mark in good faith with no intent to capitalize on plaintiff’s goodwill; (3) defendant offered high-quality services; and (4) consumers of spa services are likely to be very sophisticated and would exercise a great deal of care in choosing a relatively expensive spa treatment plan. In particular, Internet users searching for JUVA would not receive results listing defendant’s JUVENEX spa. The court rejected plaintiff’s initial-interest confusion argument because of the sophistication of consumers and the differences between the parties’ overall marks, particularly since the term “juv” is “easily associated” with the word “rejuvenation.” Finally, the court held that plaintiff was not likely to succeed on its dilution-by-blurring claim due to the differences between the overall marks, the sophistication of purchasers, and defendant’s good faith. Nor was plaintiff likely to succeed on its dilution-by-tarnishment claim as there was no evidence that defendant’s services were inferior in quality.