Saturn Corp. v. Saturn Serv., Inc., No. 01-6939 (S.D. Fla. Sept. 13, 2001).
Factual Background Edit
Defendant used the SATURN trademark in connection with its business to repair SATURN automobiles. Plaintiff, owner of the federally registered SATURN mark for automobiles, sued for trademark infringement, dilution, false designation of origin, false advertising, and cybersquatting under the ACPA.
Trial Court Proceedings Edit
Pursuant to a permanent consent injunction, defendant was permanently enjoined from: (1) using the corporate name "Saturn Service, Inc." and the phrase "Saturn Specialists" in advertisements and on the Internet; (2) using the phrase "Saturn Services, Inc." in a confusingly similar script to that of plaintiff's stylized script and logo; (3) selling and marketing modified Saturn vehicles under the TKT SC2 trademark; (4) using the SATURN trademark in its domain name "saturnusedparts.com;" (5) displaying the SATURN mark and logo on business signs, advertisements, letterhead, invoices, and otherwise; and (6) selling counterfeit apparel and accessories bearing the SATURN mark.
Finding trademark infringement, the court held that consumers would naturally assume that an independent shop that used the SATURN marks was affiliated with or sponsored by plaintiff. Moreover, defendant's use of a confusingly similar script to that used by plaintiff constituted "presumptive evidence of deliberate copying and an intent to confuse." Defendant's use of plaintiff's SC2 mark as part of its own TKT SC2 mark created a misleading impression that plaintiff endorsed or approved defendant's modified vehicles. Defendant's disclaimer did not excuse its trademark violations because disclaimers are generally insufficient to avoid consumer confusion in the marketplace.
Turning to plaintiff's ACPA claim, the court held that defendant's registration and use of the domain name "saturnusedparts.com" violated the ACPA because defendant had no intellectual-property rights in the famous SATURN mark and used the mark for goods and services also offered by plaintiff. The court also held that defendant's use of the SATURN marks diluted the distinctive quality of plaintiff's marks.
In addition to injunctive relief, the court ordered defendant to transfer to Saturn the domain name "saturnusedparts.com" and any other domain names using the SATURN marks or words confusingly similar to those marks.
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