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Chatam International v. Bodum

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Citation Edit

Chatam Int'l, Inc. v. Bodum, Inc., 157 F. Supp. 2d 549 (E.D. Pa. 2001) (summary judgment), aff'd, 40 Fed. Appx. 685 (3d Cir. 2002).

Factual Background Edit

Plaintiff had used the federally registered trademark CHAMBORD for liqueurs, fruit preserves, chocolate, and cakes since 1975. Defendant had used the federally registered mark CHAMBORD for nonelectric coffee makers since 1980. According to a 1982 consent decree resulting from litigation between the parties, defendant was allowed to use the mark CHAMBORD for coffee makers. In 1996, an affiliate of defendant registered the domain name "" to advertise CHAMBORD coffee and tea makers. Plaintiff filed suit, alleging violations of the ACPA, trademark infringement, and dilution.

Triaal Court Proceedings Edit

Defendant successfully moved for summary judgment on all three claims. On the ACPA claim, the court found no triable issue of bad faith regarding defendant's registration of the "" domain name. The court determined that defendant's actions fit within the ACPA's "safe harbor" provision for registrants that had reasonably believed that their use of the domain name constituted fair use or was otherwise lawful. Defendant's website promoted only its coffee and tea makers consistently with its trademark registration and the 1982 consent decree. The court commented:

"The Act could have required the sharing of a website directory screen for this kind of same-name situation, with links to each of the individual registrant's websites, but it did not do so."

Turning to plaintiff's trademark infringement claim, the court held that the crux of this case was initial-interest confusion. Because the parties were not competitors and did not sell sufficiently similar products or services, however, plaintiff would not suffer harm from any initial-interest confusion. According to the court:

"[A] consumer attempting to access an upscale liqueur product is unlikely to be dissuaded, or unnerved, by the sight of coffee makers and other house wares, having first brought up the coffee maker's screen."

Addressing plaintiff's dilution claim, the court analyzed the statutory requirement that defendant's use must occur after the plaintiff's mark became famous. Plaintiff argued that defendant's use of CHAMBORD on the Internet constituted a new "use in commerce," and was the proper starting point of the analysis. The court disagreed, however, noting that the Internet was only a new marketing tool and not a new use in commerce. Because almost all of the evidence showed that plaintiff's CHAMBORD mark did not gain fame until after defendant's first use of the mark, plaintiff could not prevail in its dilution action.

Appellate Court Proceedings Edit

On July 19, 2002, the Third Circuit affirmed the lower court's decision, finding that the unambiguous text of the consent decree allowed defendant to use the domain name "" in connection with the sales and offering for sale of coffee makers. In reaching its decision, the court rejected plaintiff's argument that defendant's use of "" was in breach of the consent decree because it was not "immediately apparent" to consumers that the "" domain name was related to sale or offering of coffee makers, rather than plaintiff's products.

According to the court, however, although the connection between the "" domain name and defendant's products was not immediately apparent from the domain name itself, the consent decree did not require such a connection. Moreover, the connection between the domain name and coffee makers became "immediately apparent from the web pages linked to the domain name."

Source Edit

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