A blog about patent, copyright and trademark law in the U.S. District Court
for the Southern District of New York

Summary Judgment Denied on Trademark Infringement and Unfair Competition Claims

In an August 15, 2013 ruling, Judge Paul A. Crotty denied Gogo Sports, Inc.'s motion to dismiss Lifeguard Licensing Corp.'s complaint, including the trademark, unfair competition and false designation of origin Lanham Act claims.  Lifeguard Licensing owns the "Life guard" and "Lifeguard" marks for swim trunks, men's underwear, bags, clothing and accessories.  Lifeguard Licensing does not manufacture goods itself, but licenses others to use its marks.  Defendant Gogo started selling its own "Life Guard San Francisco"-branded goods in 2009.  Lifeguard Licensing engaged in settlement discussions with Gogo, but ultimately did not pursue the matter.  In June 2010, Gogo obtained registration of its marks with the USPTO, and Lifeguard Licensing then started this action in December 2010.

Gogo moved for summary judgment on the trademark claim, contending that there had been an improper assignment in gross of Lifeguard Licensing's marks earlier in the chain of title, that Lifeguard Licensing engaged in naked licensing without adequate quality controls. and that the "Life guard" and "Lifeguard" marks had become generic.  The Court rejected these arguments.  With regard to the assignment in gross, Judge Crotty traced the chain of title of the marks and concluded that each assignment had been accompanied by a transfer of the corresponding goodwill, and the marks were thus not assigned in gross.  The Court also rejected the naked licensing argument, finding that "Gogo fails to present any evidence of Lifeguard's inadequate license supervision," and that, on the contrary, "the record is replete with compelling evidence of Lifeguard's supervision of its marks."  Judge Crotty wrote that in "light of Lifeguard's quality control efforts, the Court finds that it has not abandoned the Lifeguard Marks through naked licensing."

In regard to Gogo's contention that the marks had become generic, the Court concluded that Gogo's argument "presents a factual question that is dependent on 'how the purchasing public view the mark,'" precluding summary judgment.  Gogo had relied on a survey to prove genericness, arguing that the widespread use of Lifeguard Licensing's marks on apparel and equipment used by lifeguards had rendered them generic.  Judge Crotty ruled that based on Gogo's survey "and the widespread sale of Lifeguard-branded apparel for use by lifeguards, reasonable minds can differ with respect to whether "'the primary significance of the [Lifeguard Marks] in the minds of the consuming public is not the product but the producer,'" and denied summary judgment.  The Court also denied summary judgment on the unfair competition claim because of the same factual questions about the distinctiveness or genericness of Lifeguard Licensing's marks.
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