Playboy Enterprises, Inc. v Universal Tel-A-Talk, Inc.
1998 WL 767440 (E.D.Pa. 1998)
Facts: Universal Tel-A-Talk, Inc. was using PEI’s registered trademarks PLAYBOY and BUNNY on its website while advertising an on-line collection of nude pornography. The Playboy trademark has become well known and has developed a “secondary meaning,†such that the public has come to associate it with PEI. The RABBIT HEAD DESIGN mark has become famous and has developed significant goodwill and secondary meaning, such that the public has come to associate it exclusively with PEI. The BUNNY mark has become associated with PEI in connection with adult entertainment services. Playboy owns and operates the domain names, www.playboy.com & cyber.playboy.com.
Procedure: Plaintiff Playboy Enterprises, Inc. filed action on October 2, 1996 alleging trademark infringement and related causes of action under the Lanham Act, and Pennsylvania’s antidilution law. The court entered a temporary restraining order and altered a consent decree enjoining the defendant’s use of PEI’s trademarks. The complaint was thereafter amended to include a counterfeiting claim.
Issue: Whether Tel-A-Talk infringed upon Playboy’s trademark rights by operating the website www.adult-sex.com/playboy and using Playboy’s symbols and name on the website?
Held: Yes
Rationale: A competitor infringes upon another’s trademark rights where a consumer would likely likely be confused between the two markings.
Rule: Consumer Confusion Test: Whether a consumer is somewhat familiar with the plaintiff’s mark would likely be confused when presented with the defendant’s mark alone?
To succeed on the merits, a P must establish that:
a) The marks are valid and legally protectable;
b) The marks are owned by the plaintiff; and
c) The defendants’ use of the marks to identify goods or services is likely to create confusion concerning the origin of the goods and services.
In determining whether a likelihood of confusion exists, the court may take into account:
i. The degree of similarity between the owner’s mark and the alleged infringing mark;
ii. The strength of owner’s mark;
iii. The price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase;
iv. The length of time the defendant has used the mark without evidence of actual confusion arising;
v. The intent of the D in adopting the mark;
vi. The evidence of actual confusion;
vii. Whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media;
viii. The extent to which the targets of the parties’ sales efforts are the same;
ix. The relationship of the goods in the minds of the public because of the similarity of function; and
x. Other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the D’s market.
1998 WL 767440 (E.D.Pa. 1998)
Facts: Universal Tel-A-Talk, Inc. was using PEI’s registered trademarks PLAYBOY and BUNNY on its website while advertising an on-line collection of nude pornography. The Playboy trademark has become well known and has developed a “secondary meaning,†such that the public has come to associate it with PEI. The RABBIT HEAD DESIGN mark has become famous and has developed significant goodwill and secondary meaning, such that the public has come to associate it exclusively with PEI. The BUNNY mark has become associated with PEI in connection with adult entertainment services. Playboy owns and operates the domain names, www.playboy.com & cyber.playboy.com.
Procedure: Plaintiff Playboy Enterprises, Inc. filed action on October 2, 1996 alleging trademark infringement and related causes of action under the Lanham Act, and Pennsylvania’s antidilution law. The court entered a temporary restraining order and altered a consent decree enjoining the defendant’s use of PEI’s trademarks. The complaint was thereafter amended to include a counterfeiting claim.
Issue: Whether Tel-A-Talk infringed upon Playboy’s trademark rights by operating the website www.adult-sex.com/playboy and using Playboy’s symbols and name on the website?
Held: Yes
Rationale: A competitor infringes upon another’s trademark rights where a consumer would likely likely be confused between the two markings.
Rule: Consumer Confusion Test: Whether a consumer is somewhat familiar with the plaintiff’s mark would likely be confused when presented with the defendant’s mark alone?
To succeed on the merits, a P must establish that:
a) The marks are valid and legally protectable;
b) The marks are owned by the plaintiff; and
c) The defendants’ use of the marks to identify goods or services is likely to create confusion concerning the origin of the goods and services.
In determining whether a likelihood of confusion exists, the court may take into account:
i. The degree of similarity between the owner’s mark and the alleged infringing mark;
ii. The strength of owner’s mark;
iii. The price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase;
iv. The length of time the defendant has used the mark without evidence of actual confusion arising;
v. The intent of the D in adopting the mark;
vi. The evidence of actual confusion;
vii. Whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media;
viii. The extent to which the targets of the parties’ sales efforts are the same;
ix. The relationship of the goods in the minds of the public because of the similarity of function; and
x. Other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the D’s market.