Lighthouse Plastics, LLC v. Lighthouse Plastics, LLC, 2006 WL 1030003 (N.D. Miss. Apr. 14, 2006).
Factual Background Edit
Plaintiff, a Missouri-based company, manufactured plastic products under the federally registered mark LIGHTHOUSE PLASTICS, the trade name LIGHTHOUSE PLASTICS, LLC, and a red and white lighthouse logo since 1998. Plaintiff operated a website at “lighthouse.com.” Starting in late 2001, defendant, a Mississippi-based company, manufactured plastic products under the trademark LIGHTHOUSE PLASTICS, the trade name LIGHTHOUSE PLASTICS, L.L.C., and the domain name “lighthouseplasticsllc.com.” The quality of defendant’s products “has consistently fallen below customer expectations.”
Trial Court Proceedings Edit
Plaintiff sued for trademark infringement and cybersquatting. Regarding infringement, the court held that plaintiff had priority; defendant’s trademark and trade name were identical or virtually identical to plaintiff’s; and defendant’s uses caused actual confusion and were likely to continue to create a likelihood of confusion. Turning to plaintiff’s ACPA claim, the court held that plaintiff’s mark and trade name were distinctive when defendant registered its domain name and that defendant’s domain name caused actual confusion and created a continuing likelihood of confusion. The court did not specifically address the bad-faith prong of the ACPA.
The court permanently enjoined defendant from using LIGHTHOUSE PLASTICS, LIGHTHOUSE PLASTICS, L.L.C., a red and white lighthouse logo, and any confusingly similar marks and images. The court also ordered the transfer of the domain name “lighthouseplasticsllc.com” to plaintiff. The court found that defendant’s actions had damaged plaintiff, including “the loss of future contracts and the opportunity of obtaining customers.” The court awarded plaintiff $1,929,937 as compensatory damages, calculated as a reasonable royalty of defendant’s sales by plaintiff’s damages expert, and $150,000 in attorney's fees. Finally, the court provided that any party violating its judgment would be responsible for the other party’s legal fees and costs incurred in enforcing the judgment, including attorney's fees in bringing contempt motions.
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