Pop goes the kitty? registration and infringement are separate inquiries, court points out

SportPet Designs Inc. v. Cat1st Corp., No. 17-CV-0554 (E.D.
Wis. Mar. 2, 2018)
SportPet sued Cat1st for patent, trademark, and copyright
infringement and violations of Wisconsin’s Deceptive Trade Practices Act based
on its sale of pet products such as play structures for cats. SportPet alleged infringement of two registered trademarks: POP OPEN for collapsible containers
for household use [containers that … pop open?] and SPORT PET DESIGNS for pet
kennels, beds, and bedding and pet toys.
SportPet wasn’t assigned the POP OPEN mark until after it
brought this action, so it lacked standing to assert a claim for infringement. Even
if it could establish standing, the complaint didn’t plausibly suggest
infringement.  Not strengthening the
claim for the distinctiveness of the mark, the complaint alleged that “Cat1st
is violating SportPet’s . . . Pop Open trademark[]” by “using and advertising
the pop open design,” which “is a protectable mark.” But the word mark (if mark
it be) does not protect “the pop open design” (which presumably would have its own functionality issues if claimed as a mark).
The complaint also alleged that “Cat1st’s packaging and
advertising copies” language from SportPet, e.g., “pop open, sturdy and
lightweight, for travel, and convenient for carrying”—“almost word for word.”  That wasn’t enough here. Examples in the
complaint showed Cat1st’s use of similar terms to those used by SportPet—e.g., “sturdy,”
“lightweight,” “for travel,” and “for your carrying convenience”—none used the
specific phrase “pop open” (or a colorable imitation of it) in any way, much
less as a distinguishing and source-identifying mark.
SportPet’s second trademark claim did a lot better.  Here are the parties’ logos and packaging:

Plaintiff and defendant logos

Plaintiff and defendant packaging

Cat1st argued that the issue was whether its logo infringed SportPet’s
standard text mark.  But that’s not so:
trademark cases evaluate the marks “in light of what happens in the
marketplace.”  [citing me!]  The court also rejected as outside the
pleadings Cat1st’s argument that its uses were all “from packaging for products
sold in Japan under an exclusive license agreement” between the parties, “where
Cat1st lawfully owns the trademark registration for ‘Sport Pet Japan.’” Likely
confusion was sufficiently pled.
SportPet’s copyright infringement claim failed because it
had’t sought or received registration. 
[And might have a Kirtsaeng
issue, if Cat1st’s claims about Japan are true.]
The court also dismissed a claim under Wisconsin’s Deceptive
Trade Practices Act alleging that Cat1st misrepresented “to the public . . .
that [it is] selling SportPet’s products” and “misrepresent[ing] to [SportPet]
that [it] only sold the infringing products in Japan.” Cat1st’s
misrepresentations to the public allegedly caused SportPet to lose sales due to
customer confusion and Cat1st’s misrepresentations about where it was selling
its goods allegedly allowed it avoid legal action as it snuck into the U.S.
market. The court found that SportPet didn’t plausibly allege that the
misrepresentations caused SportPet any pecuniary losses recoverable under the DTPA, because
misrepresentations to consumers didn’t materially induce SportPet itself to
act, as required.  And Cat1st’s alleged
misrepresentations to Sport Pet didn’t contribute to SportPet’s decision to buy
anything or otherwise enter into any commercial transactions as a consumer of
goods or services, also required by the DTPA.

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