Court makes the write choice on descriptive fair use

Marketquest Group, Inc. v. BIC Corp., No. 11-cv-618 BAS
(S.D. Cal. Apr. 17, 2015)

Marketquest website using All In One and The Write Choice marks
Marketquest sued BIC for infringing its registrations for ALL-IN-ONE
and THE WRITE CHOICE for, among other things, pens.  BIC included “The Write Pen Choice” in online
advertising and displays for writing instruments, including its pens, in 2010. The
ads included BIC ® and ROUND STIC ® at the top of the page, followed by “The WRITE
Pen Choice for 30 years!,” unaccompanied by either TM or ®.  A BIC subsidiary that sells promotional
products, Norwood, included the phrase “All in ONE” on its 2011
product catalogue. Norwood ® was printed in a larger font on the cover of the
catalogue, and “All in ONE” appeared below and to the right of it.

Bic write choice ad
The court initially determined that these uses had “some
likelihood of confusion” and the “potential” for infringement and the case
proceeded to summary judgment, which BIC then won on fair use.  Fair use requires descriptive use, other than
as a mark, fairly and in good faith only to describe the defendant’s goods or
services.  Some possibility of confusion
is compatible with fair use, since the existence of the defense reflects “the
undesirability of allowing anyone to obtain a complete monopoly on use of a
descriptive term simply by grabbing it first.” 
The Ninth Circuit has said that the degree of consumer confusion remains
a factor, along with “the strength of the trademark, the descriptive nature of
the term for the product or service being offered by [the plaintiff] and the
availability of alternate descriptive terms, the extent of the use of the term
prior to the registration of the trademark, and any differences among the times
and contexts in which [the plaintiff] has used the term.”  (Follow along and see how many of these the
court considers—which says more about the undesirability of the Ninth Circuit’s
laundry list than the quality of the district court’s analysis here.)
As for “All in ONE,” the court found that it had the meaning
“an entity or object which combines all the required or appropriate elements,
items, or functions in one” for over 130 years. 
All didn’t mean “everything,” but “everything appropriate.” Marketquest
argued that “all in one” wasn’t descriptive because Norwood “produced other
catalogs in addition to their `all in ONE’ Catalog that year which featured
their housemarks and sub-brands.”  So
what?  “All in one” meant “appropriately
consolidated.” “Trademark fair use is designed to protect uses of the plain
meanings of common words, and semantic contortions cannot render Norwood’s
meaning or use uncommon.”
When a trademark owner claims a descriptive phrase, it
accepts the risk that such marks are weak and that others will make descriptive
fair use of them.  Norwood used the
common meaning of “all in one,” other than as a mark.  The only remaining issue was BIC’s good
faith.  Knowledge of the marks alone was
not enough.  “While it is true that a
larger corporation may not roll over a small corporation’s mark, any
organization that imbues secondary meaning to common phrases assumes the risk
that another organization in the same business sphere will use that phrase for
its common meaning. Marketquest was on notice that its ALL-IN-ONE marks were,
by their very nature, susceptible to such confusion.”  Marketquest also claimed that the use of both
marks in the same year demonstrated bad faith, but use of two common
descriptive phrases in “wide-ranging marketing materials” was also
Plus, Norwood “largely mitigated the risk of confusion” by
prominently printing its NORWOOD® mark in every location including the phrase. “Spatially,
there is no implied association between the Norwood mark and the All in ONE
descriptor. All in ONE is printed in a standard font, and it is followed by a
list of generic types of items included in the catalog.” Several places in the
catalog also explained the phrase’s context, including: “Our primary product
resource, featuring all product lines in ONE catalog.” Norwood did “everything
possible, short of an explicit disclaimer, to mitigate the risk of confusion,”
and disclaimers aren’t required.
The “write pen choice” fared similarly.  There was no evidence of actual or potential
confusion.  Marketquest argued that BIC’s
use was suggestive, but “the ‘write choice’ is a trite pun, notable only for
its obviousness.”  The words were used
with conventional spacing (rather than something like WriteChoice) and did not denote
a trademark use.  The court cited
evidence that advertisers use puns in 10-40% of ads, because consumers feel
pleasure when they solve an easily solved riddle, and they may transfer this
positive affect to the product being advertised.  “This simplistic pun is directly related to
BIC’s pen product, and ‘write’ is far more descriptive of a pen than of
Marketquest’s general promotional products business. To preclude BIC from
making this pun would effectively eliminate this avenue of commercial speech.”
BIC took similar measures to reduce the likelihood of
confusion here, including modifying its promotion from “The WRITE choice for
over 30 years!” to “The WRITE Pen Choice for 30 Years!” BIC also “rigorously”
labeled its marks with ® or TM, and used only its house font to write the
phrase. “While Marketquest often uses a nondescript cursive font for ‘the write
choice’ logo, its failure to make a more distinctive mark is again an assumed
risk.”  This was undisputedly good faith.
Marketquest also couldn’t suggest a viable alternative for
the phrase.  Its suggestion of “the right
choice” “eliminates any pun and begs readers to ask: ‘Why not use the obvious
pun here?’”  Its problem, if any, was of
its own making.

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