Internet Trademark Case Summaries

GreenPoint Fin. Corp. v. Sperry & Hutchinson Co.

116 F. Supp. 2d 405 (S.D.N.Y. 2000)

Plaintiff operated a bank in the “GreenPoint” area of Brooklyn, New York, under the mark and name “GREENPOINT.”  Defendant, well known for its “S&H Green Stamp” program, used the mark GREENPOINTS and the domain name “greenpoints.com” for its gift-redemption program.  The court denied plaintiff’s motion for a preliminary injunction.  Plaintiff’s claims of infringement and false designation of origin failed because its mark was not protectable—it was geographically descriptive and had not acquired secondary meaning on a local or national level—and it failed to establish a likelihood of confusion.  Although several isolated e-mails mistakenly sent to plaintiff were indicative of initial-consumer confusion, they did not constitute actionable confusion because “no purchases [were] made in error and no diversion of goodwill [had] been shown.”  Plaintiff’s dilution claims failed because its mark was neither famous nor sufficiently distinctive to warrant protection under federal and state dilution law, respectively.  And because defendant adopted the GREENPOINTS mark to benefit from the goodwill associated with its “Green Stamps” program, plaintiff could not show the bad faith required to prove its cybersquatting claim.  Finally, the balancing of harms favored defendant.  In particular, an injunction preventing defendant’s use of GREENPOINTS and “greenpoints.com” on the Internet in defendant’s limited trade area “would effectively mean the termination of the web site nationwide, thus closing down Defendant’s business.”