Opinion
Civ. File No. 00-1872 (PAM/JGL)
February 21, 2002
MEMORANDUM AND ORDER
This matter is before the Court on a Motion for Summary Judgment filed by Defendant Fashionmall.com, Inc. ("Fashionmall"). Shortly after Fashionmall's Motion was noticed, Plaintiff moved to dismiss Defendants Boo.com Group Ltd. and Boo.com North America, Inc. (neither of which had ever been served with the Complaint), and to add E-com, Inc. as a Defendant. Because the Court finds that Plaintiff has failed to prove its claims of trademark infringement, trademark dilution, and unfair competition, the Court will grant summary judgment to Fashionmall in all respects, will dismiss the Boo.com Defendants, and will deny the remainder of Plaintiff's Motion as moot.
BACKGROUND
Plaintiff Boo, Inc. is a Minnesota corporation that, from 1990 until 1999, was engaged in the business of selling children's and adult clothing and accessories. Although Plaintiff insists that it is still a viable entity, the evidence adduced during discovery shows that Plaintiff no longer has any full-time employees, that the owners of Plaintiff no longer perform any day-to-day functions, and that Plaintiff no longer produces any income. It is undisputed that Plaintiff has never taken any steps to register the trademark "Boo."
Defendant Boo.com Group Limited and Boo.com North America, Inc. (collectively, "Boo.com") launched the first boo.com internet website in 1999. As with many websites, boo.com did not flourish, and in 2000, each Boo.com entity filed for bankruptcy. In May 2000, Fashionmall's wholly owned subsidiary E-com, Inc. purchased the boo.com domain name and other intellectual property assets, including trademarks and trademark applications, at an auction conducted during the liquidation proceedings for Boo.com Group Limited. Plaintiff contends that in the spring of 2000 it had been negotiating with Boo.com over the use of the boo.com domain name, but that such discussions did not bear fruit.
The Court is disturbed by several false statements in the Complaint. Although some of the erroneous statements may be attributed to typographical errors, others are simply incorrect statements of the facts. For example, the Complaint claims that Plaintiff registered the internet domain name "www.boo.fashion.com." (Compl. ¶ 15.) However, during discovery, one of Plaintiff's owners conceded that Plaintiff had never registered this, or any other, domain name. (Pontius Dep. at 139, 149-50.) The Court reminds Plaintiff and counsel of the obligation to verify information contained in pleadings prior to submitting such to the Court. See Fed.R.Civ.P. 11.
After Fashionmall's subsidiary purchased the boo.com name, it proceeded to develop a new boo.com website. That website would not sell any products, but would rather be a portal site that offers a "click-through" service for clothing retailers. The new boo.com website launched in October 2000.
Plaintiff now asserts that the name boo.com infringes on Plaintiff's common-law trademark in the name "Boo." According to Plaintiff, there has been a "flood of inquiries" about whether Plaintiff is related to boo.com, evidencing the confusion in the marketplace. Plaintiff also raises claims of trademark dilution, unfair competition, and violation of the Minnesota Deceptive Trade Practices Act, Minn. Stat. § 325D.44. During the pendency of the litigation, the Patent and Trademark Office approved registration of Fashionmall's trademark in the name "Boo." (Jan. 22, 2002, letter from Dan Chorost to Court.)
DISCUSSION
A. Trademark Infringement
To succeed on its trademark infringement claim, Plaintiff must show that it has a valid common-law trademark and that there is a likelihood of confusion between Plaintiff's mark and the alleged infringing use by the defendant. See, e.g., Aveda Corp. v. Evita Mktg., Inc., 706 F. Supp. 1419, 1426 (D.Minn. 1989) (setting forth elements of federal trademark infringement claim). Here, Fashionmall seems to assume for the purposes of its Motion that Plaintiff has (or had) a valid common-law trademark in the name Boo, Inc. Thus, the infringement inquiry will depend on whether there is a likelihood of confusion between Boo, Inc. and Fashionmall's use of Boo.com.
To determine whether there is a likelihood of confusion, courts should examine the following factors:
(1) the strength of the trademark; (2) the similarity between the parties' marks; (3) the competitive proximity of the parties' products; (4) the alleged infringer's intent to confuse; (5) evidence of actual confusion; and (6) the degree of care reasonably expected of potential customers.
Duluth News-Tribune v. Mesabi Pub. Co., 84 F.3d 1093, 1095 (8th Cir. 1996) (citing SquirtCo, Inc. v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980).) Resolution of the likelihood of confusion issue "does not hinge on a single factor, but requires consideration of [all of the] factors to determine whether under all the circumstances there is a likelihood of confusion." SquirtCo, 628 F.2d at 1091.
Plaintiff's trademark infringement claims fail because, aside from the similarity between the parties' marks, all of the remaining factors show that there is not a likelihood of confusion.
1. Strength of the mark
Part of the inquiry into a mark's strength focuses on the characteristics of the mark itself. It if it is a fanciful mark, it is deemed strong and is entitled to the highest level of protection. Duluth News-Tribune, 84 F.3d at 1096. A descriptive mark, on the other hand, is generally not considered strong and is not entitled to great protection. Id. In this case, the Court finds that Plaintiff's mark is suggestive, which requires "some amount of imagination to reach a conclusion regarding the nature of the product." Mars Musical Adventures, Inc. v. Mars, Inc., 159 F. Supp.2d 1146, 1150 (D.Minn. 2001) (Davis, J.). Thus, Plaintiff's mark is somewhat strong and is entitled to some protection.
The strength inquiry also examines the mark's commercial strength in the marketplace. Rainforest Café, Inc. v. Amazon, Inc., 86 F. Supp.2d 886, 898 (D.Minn. 1999) (Davis, J.). Here, the parties dispute whether Plaintiff was known outside the upper midwest and the extent of Plaintiff's advertising expenditures. Although Plaintiff claims to be well-known in Canada, Japan, England, France, and both the eastern and northern sections of the U.S. and California, there is no evidence in the record that Plaintiff made any sales in any foreign country, nor is there evidence that Plaintiff made advertising expenditures outside the upper midwest. Plaintiff's limited geographic identity is evidence that Plaintiff's mark is not strong.
Moreover, the evidence shows that Plaintiff has not conducted any business since 1999. Thus, even if Plaintiff had a strong mark prior to 1999, the strength of Plaintiff's mark was undoubtedly seriously diminished by its disappearance from the marketplace. Because this disappearance happened at about the same time as the first boo.com website was launched, the weakening of the mark caused by Plaintiff's withdrawal from business is further evidence that Plaintiff's mark is not strong for the purposes of the likelihood of confusion inquiry.
2. Similarity between the marks
Fashionmall argues that parties' marks are not similar. This argument strains credulity. "Boo" and "boo.com" are nearly the same word, and Fashionmall's trademark registration for the name "Boo" belies its assertion that "boo.com" is not similar to "Boo." The marks are identical for the purposes of the likelihood of confusion analysis.
3. Competitive proximity of the parties' products
The overwhelming evidence in this case is that Fashionmall's boo.com does not compete with any of Plaintiff's former products. Boo.com is a portal site that does not offer any product for sale. Although it is related to clothing in that the content of the site consists of various online clothing merchants, the site itself is not a retailer. Thus, the parties' products are not in competitive proximity with one another. Moreover, Fashionmall's use of boo.com did not begin until October 2000, well after Plaintiff ceased doing business. This factor weighs against a likelihood of confusion.
4. Fashionmall's intent to confuse
There is absolutely no evidence that Fashionmall intended to confuse the public by adopting the boo.com domain name. Indeed, the evidence shows that Fashionmall was not aware of the existence of Plaintiff before Plaintiff instituted this lawsuit. This factor weighs against a likelihood of confusion.
5. Evidence of actual confusion
Plaintiff contends that it has been "flooded" with calls from confused customers. However, as Fashionmall notes, Plaintiff has provided the Court with no admissible evidence showing that any customers were in fact confused. See Mars Musical Adventures, 159 F. Supp.2d at 1151-52 (finding affidavits of misdirected e-mails, phone calls, and the like was inadmissible hearsay evidence). The record thus contains no evidence of actual confusion. This factor weighs against a likelihood of confusion.
6. Degree of care
The evidence shows that any potential customer of Fashionmall would tend to exercise great care, because such customers pay large fees to be included on the boo.com site. On the other hand, Plaintiff's customers, to the extent that Plaintiff still has customers, likely would exercise less care when purchasing the products formerly offered by Plaintiff, because such products were not terribly costly. At best, then, this factor is neutral in the likelihood of confusion analysis.
7. Conclusion
The SquirtCo factors, taken as a whole, show that Plaintiff has failed to establish that genuine issues of fact exist on its contention that there is a likelihood of confusion between its mark and Fashionmall's mark. Plaintiff's trademark infringement claim must be dismissed.
B. Trademark Dilution
To prevail on its trademark dilution claim, Plaintiff must prove that:
1. the marks at issue were famous before Fashionmall began use of the domain name at issue; and
2. Fashionmall's use causes dilution of the distinctiveness of the marks.15 U.S.C. § 1125(c). Dilution is "the lessening of the capacity of a famous mark to identify and distinguish goods or services." Id. § 1127.
As discussed above, there is scant evidence in the record that Plaintiff's mark was "famous" or strong before Fashionmall began boo.com. Moreover, given that Plaintiff has not used its mark in commerce since well before Fashionmall launched boo.com, Plaintiff cannot show that Fashionmall's use causes dilution of Plaintiff's mark. Plaintiff's trademark dilution claim fails.
C. Unfair Competition and Deceptive Trade Practices
Because Plaintiff's unfair competition and Deceptive Trade Practices claims depend on the success of its infringement and dilution claims, those claims must also be dismissed. Specifically, to prove either unfair competition or a violation of the Deceptive Trade Practices Act, Plaintiff must show a likelihood of confusion. Mars Musical Adventures, 159 F. Supp.2d at 1153. Plaintiff has failed to show a likelihood of confusion, and thus its unfair competition and Deceptive Trade Practices claims fail as a matter of law.
CONCLUSION
Based on the files, record, and proceeding herein, IT IS HEREBY ORDERED that:
1. Plaintiff's Motion to Dismiss and to Add Defendant (Clerk Doc. No. 19) is GRANTED in part and DENIED in part as follows:
a. Defendants Boo.com Group Ltd. and Boo.com North America, Inc. are DISMISSED; and
b Plaintiff's Motion to add E-com, Inc. as a Defendant is DENIED as moot; and
2. Defendant's Fashionmall.com, Inc.'s Motion for Summary Judgment (Clerk Doc. No. 26) is GRANTED.