Tdata, Inc. v. Aircraft Technical Publishers, 411 F.Supp.2d 901 (S.D. Ohio 2006) (full-texr).
Factual Background Edit
Plaintiff and defendant both sold software for managing aircraft maintenance and repair. Plaintiff filed this action to invalidate several patents owned by defendant. Defendant filed a separate suit against plaintiff for trademark infringement and unfair competition, which was consolidated into this action. Defendant owned the marks ATP, ATP NAVIGATOR, and ATP MAINTENANCE DIRECTOR, and alleged that plaintiff improperly used these marks in metatags and “title tags” to draw potential customers of defendant to plaintiff’s websites.
Trial Court Proceedings Edit
Both parties moved for summary judgment on the trademark infringement and unfair competition claims. Defendant relied in part on the initial-interest confusion doctrine, while plaintiff argued that the Sixth Circuit did not adopt this doctrine and instead relies on the traditional multi-factor likelihood-of-confusion test.
The court held that the multi-factor test should be applied, but also held that the initial-interest confusion doctrine can be a substitute for evidence of actual confusion in the multifactor test. Applying the multi-factor test, the court held a likelihood of confusion existed and granted defendant’s motion for summary judgment because: defendant’s ATP mark was a valid, incontestable mark with some distinctiveness; the parties were direct competitors on some products; plaintiff’s use of “ATP” in its metatags was indistinguishable from defendant’s ATP mark; both parties marketed their goods on the Internet; although consumers of the parties’ products were relatively sophisticated and exercised a commensurate degree of care, this factor ultimately had minimal significance because the parties’ marks were identical and even a sophisticated buyer can incorrectly presume company affiliations where none exist; and plaintiff’s use of the ATP mark in metatags hidden from public view instead of on its website in a product-comparison chart led to an inference of an intent to confuse.
The court rejected plaintiff’s affirmative defenses. First, plaintiff’s unclean hands defense had no merit because plaintiff failed to show how defendant’s alleged failure to mark its products for patent purposes served as a defense to trademark infringement. Second, plaintiff’s fair use and nominative use defenses failed because its use of the ATP mark as a metatag did not “simply and fairly” refer to defendant’s products in a descriptive sense, but rather was made “in a bad faith, bait-and-switch, create-initial-confusion sense.” Finally, plaintiff asserted a laches defense because plaintiff first used the ATP mark as a metatag in 1998 but defendant did not file this suit until six years later. Plaintiff, however, failed to establish that defendant knew of its claims in 1998 or that defendant failed to assert them in a timely manner.
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