Warner Brothers Entertainment was recently sued and the matter was dismissed and appealed to the Seventh Circuit Court of Appeals. The matter involved a motion to dismiss based on the failure to plead the proper facts to allege a claim for trademark infringement for consumer confusion and reverse confusion. Unfortunately, this was a unique case involving facts that may not qualify for traditional infringement of trademarks.
The owner of the “Clean Slate” software program Fortres Grand was suing, because of an alleged decrease in sales caused by the use of the term “Clean Slate” to refer to a software program for hacking computers. In the Dark Night Movie, Cat Woman uses a hacking software program called “Clean Slate” to hack and clear the criminal history of an individual. Fortres Grand was making the claim for trademark infringement in a traditional sense without alleging any facts in support of harm or tarnishment of the Clean Slate brand.
The difficulty with Fortres Grand’s claim was that the “Clean Slate” mark was being used in a descriptive sense by Warner Brothers as to how a software program could be used to clean the slate of a criminal’s records. Unfortunately, there are significant hurdles and challenges to this claim, because first the software program sold by Fortres Grand was not losing sales, because of confusion between the clean slate software program in the movie and its traditional “Clean Slate” mark.
The real claim at issue was the claim for tarnishment of the image of the “Clean Slate” mark based on the potential reference or association with the illegal hacking software with its Clean Slate Software. Fortres Grand was attempting to assert the claim that it was suffering a loss of sales from the potential illegal activities that its software could be used to perform. In particular, hacking of another individual’s computer by Cat Woman to become synonymous with the “Clean Slate” brand. This is actually not traditional trademark infringement, but the harm that is generally remedied by a dilution claim.
However, under the plausibility standard the Complaint for trademark infringement had to be dismissed, because it failed to allege sufficient facts to demonstrate that the descriptive use of the terms clean slate caused harm in the nature of tarnishing the “Clean Slate” brand. Thus, the Seventh Circuit affirmed the district court’s dismissal of the complaint for trademark infringement by Fortres Grand. For more go to: trademark dilution or go to www.vrplawgroup.com, www.bipeblawg.com or www.iptrialattorney.com