商標memo writing sample
- 1. MEMORANDUM To: Daniel Liffmann and Morgan Schwartz From: Yu Chi Lin Date: October 2, 2014 Re: Savannah Tech, Client No. 3011-014: potential Georgia Uniform Deceptive Trade Practice Act claim based on likelihood of confusion Our client Savannah Tech (“ST”) has used “Stingers” as their intercollegiate sports team name since 1989. A California minor-league baseball team owned by Stingl Baseball, LLC (“SB”) also uses “Stingers” as their team name. Savannah Tech hired us to analyze whether SB’s use of the name “Stingers” will create a likelihood of confusion as to the source or sponsorship of Stingl’s team if we file a claim against Stingl Baseball for deceptive trade practice under the Georgia Uniform Deceptive Trade Practices Act (UDPTA). As instructed, I have assumed that “Stingers” is a distinctive name and there is no evidence of actual confusion. QUESTION PRESENTED Whether the use of the name “Stingers” by minor-league baseball team in California creates likelihood of confusion as to the source or sponsorship of the team given that a Georgia college baseball team has been using the same name to promote its sports teams, the two parties both sell the merchandise through same catalogue and the internet, and both their market target on college students and sports fans, but the two marks are differ in front, color, and style, and the minor-league baseball team does not intend to use the same name with the college baseball team? BRIEF ANSWER/RECOMMENDATION
- 2. 2 Probably yes. The use of the name “Stingers” by the professional minor-league baseball team probably creates a likelihood of confusion as to the source or sponsorship of the college baseball team because both of the team used the same name in similar products, similar retail outlets, customers, and similar advertising media. Thus, I recommend that our client file a claim. STATEMENT OF FACTS ST is a college that has used the name “Savannah Tech Stingers” as their intercollegiate sports team name since 1989. In 2014, a coach of ST found a professional minor-league baseball team also used the name “Stingers” in California. To prevent likelihood of confusion as to the source or sponsorship of the team, ST wants to stop SB from using “Stingers”. ST’s trade name is in capital letters, leaning to the right with zig-zag underline and is always yellow with black outline. The name “Stingers” is not always printed along with “Savannah Tech.” SB’s trade name is usually in an italic font, in an orange and blue color, combined with a graphic design. Both marks were often combined with a graphic design of a stinging insect. However, ST’s graphic design is an angry looking wasp while SB’s graphic design is a bee holding a baseball bat. Both ST and SB promote their team “Stingers” locally. They also sell merchandise such as baseball hats, t-shirts,
- 3. 3 backpackers with the name Stingers, wasp or bee like logos and tickets through National Sports Merchandising catalogue and their home page website. Most of their revenues are from there two sources. Both parties sponsor the search engine to let their name such as “Stingers” and “Stinger sports” appeared in top 10 hit of terms. ST does not use the name “Stingers” exclusively in their baseball team. All the sports teams of college were identified as the same name. The founder of Sacramento Stingers Mark Stingl came up with the name “Stingers” from his name “Stingl” as well as Muhammad Ali’s mantra “float like a butterfly, sting like a bee.” DISCUSSION According to the Uniform Deceptive Trade Practice Act (UDTPA), a trade name owner has right to protect their trade name from the use of similar name when the use “causes likelihood of confusion or of misunderstanding” to the source or sponsorship of goods or service. Future Prof’ls, Inc. v. Darby, 470 S.E.2d 644,646 (Ga. 1996). Seven factors would be used to determine whether a “likelihood of confusion” exists including : “(1) type of mark; (2) similarity of mark; (3) similarity of the products the marks represent; (4) similarity of the parties’ retail outlets and customers; (5) similarity of advertising media; (6) defendant’s
- 4. 4 intent; and (7) actual confusion.” Caliber Auto Liquidators, Inc. v. Premier Chrysler, 605 F.3d 931, 935(11th Cir. 2010). Based on your instruction, this memorandum only examines second through sixth factors. When examining the second factor, similarity of the mark, the court considers “the overall impression created by the marks, including a comparison of the appearance, sound and meaning of the marks, as well as the manner in which they are displayed.” Caliber, 605 F.3d at 933. For example, there may not have similarity between defendant’s trade mark “Domino Pizza” and plaintiff’s “Domino Sugar” because the front, style and color of the two marks are different and the Italian surname “Domino,” creates an Italian connotation when placed next to the word “pizza.” Amstar Corp. v. Domino’s Pizza Inc., 615 F.2d 252, 261(5th Cir. 1980.) On the other hand, in Caliber, 605 F.3d at 939, the use of “slasher show” slogans by a car dealer gives the same impression as the slogans “Slasher Sales” used by the car marketer, both of them deliver “cut off the cars’ prices” idea. Caliber at 939. Similarly, in Ackerman Sec. Sys., Inc. v. Design Sec. Sys., Inc., 412 S.E.2d 588 (Ga. Ct. App. 1991), The use of a white stop-sign-shaped sign by two home-security companies may have created similar overall impressions even the color of the letter and the company name were different.
- 5. 5 Ackerman, 412 S.E.2d at 589. Third factor considers that whether the consuming public would attribute two products to a single source, if they do, the products are similar. Caliber, 605 F.3d at 930-40. In Caliber, both the parties provided car marketing service which may make “reasonable consumer could possibly attribute the products here to the same source.” Id at 940. Whereas, a reasonable consumer would hardly attribute the sugar the same source with the pizza even though all were types of food. Amstar 615 F.2d at 261. To determine the similarity of the parties’ retail outlets and customers, consider “where, how, and to whom the parties’ products are sold.” Caliber, 60 F.3d at 940. In Amstar, no similarity of the retail outlet and customers existed since the plaintiff sold its’ “Domino” sugar products primarily to grocery stores yet the defendants provided home delivery pizza to individuals. Amstar, 615 F,2d at 262. When considering the similarity of advertising media, consider each party’s method of advertising. Caliber 605 F.3d at 940. For instance, in Amstar, no similarity existed when one party used national wide advertisement, while the other used localized advertisement. Amstar 615 F.2d at 262. The sixth factor considers “whether the defendant adopted a plaintiff’s mark with the intention of deriving a benefit from
- 6. 6 the plaintiff’s business reputation.” Caliber 605 f.3d at 940. For example, in Amstar, defendant had no intent to pass off the name “Domino’s” because the name was adopted from the old name “Dominick’s,” and it sounded Italian. Amstar 615 F.2d at 263. Here, the likelihood of confusion may not exist based on the similarity of marks, purchaser and advertisements. ST and SB use a different front, style and color on the name “Stinger,” just like the use of the name “Domino’s pizza” and “Domino Sugar” in Caliber would not cause confusion because the totally different front, style and color gave people different impression. Furthermore, similar to the combination of “Domino” and “Pizza” created a different connotation in Amstar, the combination of “Stinger” and different graphic design may create different overall impression. Moreover, SB’s “Stingers” was advertised wider than Savannah Tech and the products may not be confused by professional sports fans. Finally, no intent existed to pass off SF’s trade name when SB using the name “Stinger,” similar to the use of the name “Domino’s Pizza” in Amstar was deprived from its’ old name and was used to create an Italian connection. Yet, likelihood of confusion probably does exist due in the similar sound, meaning, and the manner it display of the mark. Just as the two parties used similar slogan in car marketing service in Caliber, both ST and SB used the name “Stingers” on
- 7. 7 similar products may cause confusion. In addition, both ST and SB sponsored search engine to let the name “Stingers” appear in the top of the search. Moreover, ST and SB used the same catalogue to sell merchandise which suggest that unlike different retail outlets and different purchaser exist between “Domino’s Pizza” and “Domino Sugar” in Amstar, SF and SB target the same general category of purchaser- young sports fans which means that the purchaser may be confused as to the source or sponsorship of the team by the used of same name. Together, these factors may show a likelihood of confusion exists. In sum, it is more likely that the use of the name “Stingers” by the S B to identify and promote its baseball team creates a likelihood of confusion. CONCLUSION Stingl Baseball probably create the likelihood of confusion as to the source or sponsorship of the team because both parties use the name “Stingers” and the meaning of “Stingers” have the similar impression. In addition, both parties used the same name in similar products such as baseball hats and t-shirts. Moreover, the purchasers of these products are similar such as college students or sports fans. Furthermore, both two sold the merchandizes through National Sports Merchandizing and home page website, and both sponsor the searching engine in the name “Stingers”. Thus, SB probably
- 8. 8 created likelihood of confusion on the use of the trade name “Stingers.”