Airline sues retailer for trademark infringe. JETBLUE v. WALMART

Using a trademark in commerce is the key to acquiring trademark rights. The first user to use a trademark to brand goods is referred to as the senior user of a trademark. Subsequent users of a trademark are considered junior users. A senior user is granted priority to a trademark over junior users. In the United States a trademark user is not required to register a trademark to be granted rights to a trademark. However, registration of a trademark does strengthen the rights associated with a trademark and puts the public on notice that the trademark applicant has an interest in the trademark. If someone brands products with a trademark in a way that causes consumers to be confused with respect to the identity of the producer of a product that can be considered trademark infringement.

When a plaintiff claims that their trademark is being infringed, the plaintiff must demonstrate that the defendant’s actions cause a likelihood of confusion. Courts use several factors, derived from a 1961 case, to determine whether a plaintiff has demonstrated a likelihood of confusion. (Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961). The factors vary slightly between the different Federal Circuit Courts within the United States, however the principle factors are similar. The factors are: 1. Strength of the senior user’s mark; 2. Similarity of the marks; 3. Similarity of the products or services; 4. Likelihood that the senior user will bridge the gap; 5. The junior user’s intent in adopting the mark; 6. Evidence of actual confusion; 7. Sophistication of the buyers; 8. Quality of the junior user’s products or services; and 9. related products and services.

When a trademark application is filed, the United States Patent and Trademark Office will perform a search of other registered trademarks and deny a trademark application that is confusing similar to an existing registered trademark. However, a trademark applicant with a skilled attorney can typically satisfy objections brought up by the United States Patent and Trademark Office and get the trademark registered. When that happens, it is up to the senior user to defend their trademark. The key to the strength of a trademark is the association consumers make between a trademark and a source of products. If a senior trademark user does not object to a confusingly similar trademark then the senior user can see the value of their trademark decline.

A case which demonstrates a trademark owner fending off a similar trademark is JETBLUE AIRWAYS, v. WALMART INC., 19-cv-05879 (S.D.NY 2019). The plaintiff in this case is JetBlue, the sixth largest passenger carrier in the United States, flying an average of 1,000 daily flights and carrying over 42 million customers per year. The plaintiff operates flights throughout the United States as well as in Mexico, the Caribbean, Latin America and South America, and serves hundreds of additional international destinations through its partner airlines. JetBlue owns forty-three federal trademark registrations for the JETBLUE trademark, which are comprised of the term JETBLUE or the term JETBLUE in combination with another word or words and/or design. The products covered range from travel services to branded products like headphones. Many of the plaintiffs trademarks have reach incontestable status.

The defendant is a major international retailer that, through subsidiary companies operates Jet.com. Jet.com is an online retailer that sells a limited number of products and offers discounted pricing to customers. In May 2017, Defendants filed applications to register the trademark JET BLACK (using two separate words) in the United States and in multiple jurisdictions internationally. Later the defendant amended the trademark application to include JETBLACK as one word. The trademark application filed by the defendant indicates that the trademark will be used on products which the plaintiff presently occupies, such as vacation and travel services.

The plaintiff feels that JETBLACK is confusingly similar to the JETBLUE trademark, including in sight, sound and commercial impression. To prevent the defendant from continuing to use the JETBLACK trademark the plaintiff filed a complaint for trademark infringement. The plaintiff has requested an injunction, destruction of any products branded with the JETBLACK trademark, the defendant’s profits related to the use of the trademark and attorneys fees for the plaintiffs.

Normally, a quick settlement would be expected with the two parties agreeing not to use their respective trademarks in each other’s industries. However, given that the defendant has invested so much in purchasing Jet.com and developing the JETBLACK trademark, it seems unlikely that they will back down. Similarly, the plaintiff’s entire brand revolves around the JETBLUE trademark, it is highly unlikely they will allow JETBLACK to operate in the travel industry. It will be up to the court to decide which party prevails.

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