Bigstar Entertainment, Inc. v. Next Big Star, Inc., 105 F.Supp.2d 185, 54 U.S.P.Q.2d (BNA) 1685 (S.D.N.Y. 2000) (full-text).
Factual Background Edit
Plaintiff used the mark BIGSTAR and domain name “bigstar.com” for an online business selling movies and movie merchandise, and offering movie news, features, and previews. It sought to enjoin defendant’s use of the mark NEXT BIG STAR and domain name “nextbigstar.com” for online talent competitions.
Trial Court Proceedings Edit
Initially, the court held that “big star” was descriptive of plaintiff’s entertainment-oriented services, and that plaintiff’s BIGSTAR mark had not acquired secondary meaning. The court noted several deficiencies in plaintiff’s evidence of secondary meaning, including the failure to provide a breakdown of its $12 million in advertising expenses, the absence of survey evidence, the lack of any documentary proof of its alleged $13 million of sales in 1999, the failure to provide detailed information about the number of visitors to its website, and the substantial third-party use and registration of “BIGSTAR” marks and names.
The court also found that the vastly different logos associated with the marks and website layouts containing the marks, combined with the plain and obvious meaning of the defendant’s mark, rendered confusion unlikely. Interestingly, the court found that all Internet users are, to some extent, sophisticated purchasers because they must have some degree of education, technical knowledge, and economic independence to shop online.
Finally, the court rejected plaintiff’s argument on initial-interest confusion and distinguished this case from the Ninth Circuit’s decision in Brookfield Communications v. West Coast Entertainment. Unlike the facts in Brookfield, the marks here were not identical, the parties here were not in direct competition or in closely related businesses, and the BIGSTAR mark was weak and diluted.
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