Citation Edit

Sloan v. Auditron Elec. Corp., Civ. Action No. 1:101CV70 (N.D. W.Va. June 17, 2002), aff’d, 68 Fed. Appx. 386, 2003 WL 21308896 (4th Cir. June 5, 2003).

Factual Background Edit

Plaintiff registered the AUDITRON mark in a stylized format in 1967 for "bookkeeping, accounting and tax services." Although plaintiff and his successors continued to use the mark AUDITRON, in 1968 they stopped using it in the precise format as registered.

Defendant began using the mark AUDITRON for loudspeakers in 1978 but changed its business in the mid-1980s to software designed to help healthcare professionals manage their practices. Defendant registered the domain name "" in 1998.

Plaintiff tried to register the same domain name in 1999 but was unable to do so because of defendant's prior registration.

Trial Court Proceedings Edit

The district court granted defendant's motion for summary judgment on plaintiff's trademark infringement and ACPA claims. Regarding plaintiff's trademark infringement claim, the court initially noted that plaintiff's registration rights were limited to the stylized design depicted in the registration and other forms that created the same commercial impression.

In any event, defendant established a prima facie case of abandonment by showing that plaintiff had not used the AUDITRON mark as shown in the registration for almost thirty years, and plaintiff failed to overcome that presumption by providing evidence of actual use or an intent to resume use of the mark.

Further, the court noted that even if plaintiff did have a protectible mark, there was no evidence of likelihood of confusion because plaintiff spent very little money on advertising, other companies used "auditron" as part of their trade name, the goods offered by plaintiff and defendant were not similar, defendant did not have an intent to confuse, and there was no evidence of actual confusion.

Plaintiff's ACPA claim failed because it presented no evidence that defendant had a bad-faith intent to profit from plaintiff's mark. To the contrary, defendant had been using the AUDITRON mark since 1978, it obtained a legal opinion prior to using the mark, the parties provided different services, defendant was in business for twenty years before registering the domain name, and defendant used its website for legitimate business purposes.

Finally, the court rejected defendant's request for attorney's fees because plaintiff's claims were legitimate and the case was not "exceptional."

Appellate Court Proceedings Edit

On appeal, the Fourth Circuit affirmed the district court's grant of summary judgment. It rejected plaintiff's argument that he produced sufficient evidence to create a question of fact regarding his abandonment of the mark as registered. The court agreed with the district court that plaintiff could not create a factual issue "through an eleventh-hour affidavit that contradicts his earlier fuller deposition testimony that he stopped using" the mark as registered.

Moreover, it was plaintiff's burden, not defendant's, to demonstrate actual use of a mark creating the same commercial impression as the registered mark. The Fourth Circuit affirmed the district court's grant of summary judgment on plaintiff's ACPA claim for the reasons stated by the district court.

Source Edit

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