Actual confusion provides evidence of irreparable harm

Home Comfort Heating and Air Conditioning, Inc. v. Ken
Starr, Inc., 2018 WL 3816745, No. 18-cv-00469-JLS-DFM (C.D. Cal. Jul. 24, 2018)
Home Comfort Heating & Air Conditioning provides HVAC
services in Los Angeles County and the surrounding area; it asserted rights in
marks “wholly or partially comprised of the word elements ‘HOME COMFORT,’ ” including
“HOME COMFORT SERVICES,” and “HOME COMFORT HEATING AND AIR CONDITIONING.” It
had some registrations.  Ken Starr Inc. subsequently
began operating an HVAC business under the name “Home Comfort USA” in Southern
California, including Los Angeles County and the surrounding area.
Notable findings: The court found strong evidence of
confusion from negative online reviews, including one negative Yelp review, and
oral complaints with regard to products and services that were supplied by KSI.
In the prior year, Home Comfort received five attempts by customers seeking to
return products purchased from KCI, two refund requests arising out of KCI’s
services, thirty inquiries about KCI’s special pricing offers, and forty
inquiries about available services from customers who saw KCI’s ads. A few of
the voicemails were generic requests for quotes, but the majority reference
specific accounts, appointments, and issues with prior work done by KCI.
The district court applied the 9th Circuit’s
screwed-up “can you determine the product just from knowing the mark?” test to
determine that the marks were suggestive. 
Twenty-six HVAC businesses around the nation that use some combination
of the terms “home” and/or “comfort” in connection with their services didn’t
diminish the strength of the mark, especially without more evidence of use and
given that “HVAC customers will, necessarily, seek a local source for these
products and services.” Of the three businesses that did serve California, each
used other distinguishing words as well: “Stephan’s Home Comfort Services,”
“Engineered Comfort,” and “US Comfort.” Nor did Home Comfort’s addition of “Heating
& Air Conditioning” to its marks, KCI’s slogan “Call the Comfort Guys,
We’re There!” or the parties’ different colors deminish the likely confusion.
The word marks “Home Comfort” and “Home Comfort USA” were essentially
indistinguishable and adding generic words didn’t create a meaningful
distinction “from the perspective of a consumer.” The stylized marks included
“Home Comfort” as their dominant portion and had a depiction of a house and
appeared substantially similar; the colors and the slogan weren’t how consumers
would make a primary identification.
Purchaser care was neutral because almost everyone needs
HVAC services, making the target market average, but they tend to be expensive,
increasing consumer care.
Given that the factors favored a finding of likely
confusion, was there irreparable harm? The rule is that “[e]vidence of loss of
control over business reputation and damage to goodwill could constitute
irreparable harm,” and the court found that the actual confusion shown here
satisfied that standard.  However, delay
works against a finding of irreparable harm, and Home Comfort delayed 20 months
after discovery of the problem to seek relief. 
The court found that the delay was sufficiently explained by Home
Comfort’s oppositions to KCI’s trademark registration applications and
extensive settlement discussions. In addition, the dates of the voicemails
indicated that confusion was increasing over time, making delay less probative.
 With that, the other requirements for
injunctive relief were easily satisfied.

from Blogger http://bit.ly/2ER7rWj

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