Troutman Sanders LLP: Summary Judgment Awarded in First EDVA Trademark Decision Since Rosetta Stone

By Dabney Carr

The Fourth Circuit's recent decision in Rosetta Stone v. Google, 2012 U.S. App. LEXIS 7082 (4^th Cir. April 9, 2012) [enhanced version available to lexis.com subscribers], discussed here, has apparently not chilled the EDVA's willingness to grant summary judgment in trademark actions. While acknowledging Rosetta Stone's holding that determining a likelihood of confusion is an inherently factual inquiry, Judge Brinkema of the EDVA did not hesitate to find a lack of a likelihood of confusion and grant summary judgment in a recent case. Wag'N Enters., LLC v. United Animal Nations, Case No. 1:11CV955, 2012 U.S. Dist. LEXIS 65366 (May 9, 2012) [enhanced version available to lexis.com subscribers], found here.

In Rosetta Stone, the Fourth Circuit reversed a decision by Judge Lee of the EDVA granting summary judgment to Google in a trademark infringement action by Rosetta Stone based on Google's AdWords program. In particular, the Fourth Circuit criticized Judge Lee's finding, at the summary judgment stage, that Rosetta Stone had failed to introduce evidence of a likelihood of confusion.

In Wag'N Enterprises, the plaintiff claimed infringement of its registered service mark, "Wag"N Rover Respond'R" and its unregistered shortened form of that mark, "Rover Respond'R" by defendant's use of the term "RedRover Responders" for its volunteer pet rescue program.

Judge Brinkema's detailed decision turned on her assessment of the likelihood of confusion based on the factors set forth in Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4^th Cir. 1984) [enhanced version available to lexis.com subscribers]. Judge Brinkema's findings on each of those factors were as follows:

• The plaintiff's marks were overall very weak marks because they were merely suggestive marks and had little commercial strength. 
• There was no dispute of material fact that the parties' marks were not similar. The marks shared no identical component words, the marks were not confusingly similar in meaning, and the use of the two marks were very dissimilar when used in logo form. 
• Plaintiff presented no evidence of actual confusion and declined to present any survey evidence of confusion, which "severely undercuts" plaintiff's case. 
• Plaintiff had made no showing of bad faith or intent to induce confusion. 
• The general type of goods and services provided by the parties were related to some degree, but the actual products and services identified by the parties' marks were quite different.
  
• Any overlap in the parties' facilities and overlap of advertising did not preclude summary judgment.

Judge Brinkema's ruling is not surprising, given the weakness of the plaintiff's evidence. The decision, however, reaffirms that even after Rosetta Stone, summary judgment remains available for accused trademark infringers, especially where a plaintiff fails to develop evidence of actual confusion or present survey evidence as a substitute for proof of actual confusion.

Copyright © 2012, Troutman Sanders LLP

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