PACCAR INC. v. Telescan Technologies LLC. 319 F. 3d 243 (6th Cir. 2003)
Facts: Telescan operated a website for finding used cars on the internet. PACCAR is a manufacturer of cars and trucks. Two of the trucks that PACCAR manufactured were the “Peterbilt†and the “Kenworth†(Both of which PACCAR had been manufacturing for over sixty years). PACCAR also operated websites that made it easier for customers to locate new and used cars and trucks. Both PACCAR and Telescan operated websites for the “Peterbilt†and “Kenworth†trucks. PACCAR’s websites used the domain names www.peterbilt.com and www.kenworth.com. The Telescan websites used several domain names all of which incorporated the names “Peterbilt†and “Kenworth†in the domain name.
Issue: Did Telescan infringe or dilute PACCAR’s registered trademarks?
Procedure: In 1999 PACCAR brought action under the Lanham Act in W.D. Washington, but the suit was dismissed for lack of personal jurisdiction over Telescan. After this Telescan went on the offensive and brought a declaratory judgment action against PACCAR in E.D. Mich. PACCAR counter-claimed and then sought a preliminary injunction seeking to prohibit Telescan from using the domain names which included the words “Peterbilt†and “Kenworth.†This preliminary injunction was granted. Telescan appealed to the Sixth Circuit Court of Appeals.
Court’s Analysis: The Sixth Circuit determined that the district court was reasonable in issuing the preliminary injunction. The Sixth Circuit reviewed the factors that are weighed in determining the likelihood of customer confusion:
1.Strength of PACCAR’s Marks- the court found that the marks of “Peterbilt†and “Kenworth†were very strong. The court found that they were fanciful marks and were known throughout the nation. Therefore they were distinct marks and due more protection than a mark that is more generic.
2. Relatedness of goods and services- the court found the goods and services were related. PACCAR was manufacturing and selling trucks, and Telescan was selling trucks on the internet.
3. Similarity of the marks- the marks were very similar for two reasons. First both parties used domain names that featured the “Peterbilt†and “Kenworth†name, and in both domain names the names were spelled in lower case letters. More importantly once a customer reached Telescan’s site the names “Peterbilt†and “Kenworth†were plastered on the background written in a font that resembled that of PACCAR’s registered marks.
4. Actual Confusion- there was no specific evidence of actual confusion.
5. Marketing Channels- Both parties marketed there goods over the internet. The court was not influenced by the fact that Telescan had a disclaimer on their site, likely because of the facts presented above in factor three.
6. Customer Care- Telescan argued that its customers were highly sophisticated and would find out from whom they were buying; the district court found otherwise and said that the consumers were average internet users. The Circuit Court did not find the district court to be in error, and went on to reason that since the marks were so similar it may confuse even a more discerning internet user.
7. Telescan’s Intent- Telescan said they did not mean to infringe the trademarks, but had no evidence to back this up. The Circuit Court found that two factors seemed to suggest knowing infringement. First Telescan had knowledge that the marks were registered. Second the marks were mimicked all over its website.
8. Expansion into Product Lines- this factor was not contested.
The Court weighed these factors and found that clearly the similarity of the domain name and the mimicry of the marks could lead to consumer confusion. As a result the court found that PACCAR would likely succeed in a trademark infringement claim.
The Court examined Telescan’s defenses. First it looked at fair use. The Court found that no appropriate fair use claim could be made because Telescan had done more than use the marks to describe the products they were selling. The Court found that the use of the marks in the domain name and the use of the distinct script in the background was more of a marketing tool than a means to impart information to a potential customer. The Court also found that Telescan’s First Sale defense was precluded for the same reason.
Conclusion: The Court ruled that the preliminary injunction was reasonable given the likelihood of confusion; however it did narrow the injunctions so that Telescan could still use metatags featuring the words “Peterbilt†and “Kenworth.â€
Facts: Telescan operated a website for finding used cars on the internet. PACCAR is a manufacturer of cars and trucks. Two of the trucks that PACCAR manufactured were the “Peterbilt†and the “Kenworth†(Both of which PACCAR had been manufacturing for over sixty years). PACCAR also operated websites that made it easier for customers to locate new and used cars and trucks. Both PACCAR and Telescan operated websites for the “Peterbilt†and “Kenworth†trucks. PACCAR’s websites used the domain names www.peterbilt.com and www.kenworth.com. The Telescan websites used several domain names all of which incorporated the names “Peterbilt†and “Kenworth†in the domain name.
Issue: Did Telescan infringe or dilute PACCAR’s registered trademarks?
Procedure: In 1999 PACCAR brought action under the Lanham Act in W.D. Washington, but the suit was dismissed for lack of personal jurisdiction over Telescan. After this Telescan went on the offensive and brought a declaratory judgment action against PACCAR in E.D. Mich. PACCAR counter-claimed and then sought a preliminary injunction seeking to prohibit Telescan from using the domain names which included the words “Peterbilt†and “Kenworth.†This preliminary injunction was granted. Telescan appealed to the Sixth Circuit Court of Appeals.
Court’s Analysis: The Sixth Circuit determined that the district court was reasonable in issuing the preliminary injunction. The Sixth Circuit reviewed the factors that are weighed in determining the likelihood of customer confusion:
1.Strength of PACCAR’s Marks- the court found that the marks of “Peterbilt†and “Kenworth†were very strong. The court found that they were fanciful marks and were known throughout the nation. Therefore they were distinct marks and due more protection than a mark that is more generic.
2. Relatedness of goods and services- the court found the goods and services were related. PACCAR was manufacturing and selling trucks, and Telescan was selling trucks on the internet.
3. Similarity of the marks- the marks were very similar for two reasons. First both parties used domain names that featured the “Peterbilt†and “Kenworth†name, and in both domain names the names were spelled in lower case letters. More importantly once a customer reached Telescan’s site the names “Peterbilt†and “Kenworth†were plastered on the background written in a font that resembled that of PACCAR’s registered marks.
4. Actual Confusion- there was no specific evidence of actual confusion.
5. Marketing Channels- Both parties marketed there goods over the internet. The court was not influenced by the fact that Telescan had a disclaimer on their site, likely because of the facts presented above in factor three.
6. Customer Care- Telescan argued that its customers were highly sophisticated and would find out from whom they were buying; the district court found otherwise and said that the consumers were average internet users. The Circuit Court did not find the district court to be in error, and went on to reason that since the marks were so similar it may confuse even a more discerning internet user.
7. Telescan’s Intent- Telescan said they did not mean to infringe the trademarks, but had no evidence to back this up. The Circuit Court found that two factors seemed to suggest knowing infringement. First Telescan had knowledge that the marks were registered. Second the marks were mimicked all over its website.
8. Expansion into Product Lines- this factor was not contested.
The Court weighed these factors and found that clearly the similarity of the domain name and the mimicry of the marks could lead to consumer confusion. As a result the court found that PACCAR would likely succeed in a trademark infringement claim.
The Court examined Telescan’s defenses. First it looked at fair use. The Court found that no appropriate fair use claim could be made because Telescan had done more than use the marks to describe the products they were selling. The Court found that the use of the marks in the domain name and the use of the distinct script in the background was more of a marketing tool than a means to impart information to a potential customer. The Court also found that Telescan’s First Sale defense was precluded for the same reason.
Conclusion: The Court ruled that the preliminary injunction was reasonable given the likelihood of confusion; however it did narrow the injunctions so that Telescan could still use metatags featuring the words “Peterbilt†and “Kenworth.â€