Trade Media Holdings v. Huang & Assocs.

Citation

Trade Media Holdings Ltd. v. Huang & Assocs., 123 F.Supp.2d 233, 57 U.S.P.Q.2d (BNA) 1366 (D.N.J. 2000) (full-text).

Factual Background

Plaintiff owned the federally registered mark ASIAN SOURCES for a magazine about Asian-made products available for import and export, and published an online version of its magazine at ASIANSOURCES.COM. After defendant began to operate a website at ASIANSOURCE.COM regarding Asian-made consumer products available for export, plaintiff sued for trademark infringement, unfair competition, and trademark dilution.

Trial Court Proceedings

Plaintiff moved for summary judgment on all of its claims and sought attorney’s fees. First, the court granted summary judgment to plaintiff on its trademark infringement claim. After determining that plaintiff and defendant offered competing services through the same channels of trade (websites on the Internet), the court easily found a likelihood of confusion due to the overwhelming similarity in domain names. The court also found that defendant had a bad-faith intent to infringe because it continued to operate its website for a year after promising plaintiff it would cease operation.

Second, the court found that plaintiff established a prima facie case of unfair competition under Section 43(a) of the Lanham Act.

Third, the court rejected plaintiff’s dilution claim because plaintiff failed to establish as a matter of law that its ASIAN SOURCES mark was famous.

Finally, noting that defendant had not yet been deposed, the court denied summary judgment on plaintiff's request for attorney’s fees because there were issues of material fact on whether defendant's actions were willful.

Source

• This page uses content from Finnegan’s Internet Trademark Case Summaries. This entry is available under the Creative Commons Attribution-Share Alike License 3.0 (Unported) (CC-BY-SA).