Airplane manufacturer sues boat manufacturer for trademark infringement. GULFSTREAM v. GULFSTREAM

Airplane manufacturer sues boat manufacturer for trademark infringement. GULFSTREAM v. GULFSTREAM

A trademark is something used to brand products to tell consumers who produced a product.  Traditionally a trademark is thought of as a simple symbol, word or phrase, however anything that signals to consumers the identity of a product manufacturer can be eligible for trademark protection.  In the United States the first person to use a trademark to brand goods is considered the senior user, subsequent users of the trademark are considered junior users.  A senior user of a trademark has priority over the junior user in a dispute over ownership of the trademark. A trademark can be registered with the United States Patent and Trademark to strength their claim to the trademark, however registration is not necessary to begin using a trademark to brand goods, and a senior user of a trademark is still has priority over a junior users that registers a trademark.

One of the main functions of trademark law is to prevent consumer confusion.  If a someone other than the senior user brand goods with a trademark, in a way that leads consumers to confusion, that can be considered trademark infringement.  A trademark owner can file a lawsuit to stop trademark infringement with an injunction and to get monetary damages for trademark infringement which has occurred.

Just because two different companies are using the same trademark does not automatically mean that trademark infringement has occurred.  A trademark Plaintiff must demonstrate that consumer confusion exists to prevail in a trademark infringement case.  If the Defendant’s use of a trademark is unlikely to cause consumer confusion between the Plaintiff and Defendant’s products then trademark infringement has not occurred.

Several factors are used to determine whether there is likelihood of confusion between a Plaintiff’s and Defendant’s trademark.  These factors are generally refereed to as the Polaroid factors after the case which first articulated themPolaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).  Each federal circuit in the United States can have a slightly different interpretation of what constitutes a likelihood of confusion, however the factors are essentially the same.  Those factors are: 1) Strength of the senior user’s trademark, 2) Similarity of the trademarks, 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, 9) related products and services.

GULFSTREAM AEROSPACE CORP, v. GULFSTREAM UNSINKABLE BOATS, LLC,  8:20-cv-01147 (M.D.FL 2020) is a case where companies in different industries are using the same trademark.

Plaintiff in this case is a manufacturer and seller of luxury aircraft.  Plaintiff has continuously used the GULFSTREAM trademark as its flagship brand for aircraft and related products since 1959.  Plaintiff has registered GULFSTREAM as a trademark in several different product categories with the United States Patent and Trademark Office.  GULFSTREAM has been recognized as a famous trademark in prior cases filed by Plainitiff.

Defendant manufactures and sell boats using the trademark GULFSTREAM YACHTS.  Defendant began using GULFSTREAM as a trademark after Plaintiff.  Defendant regularly promotes its products in publications that cater to rich people, the same as the Plaintiff.

In 2017 Plaintiff filed an opposition to Defendant attempt to register several trademarks that include GULFSTREAM and  requested the cancellation of a trademark registered to the Defendant.  In 2019 the Trademark Trial and Appeal Board found that there was a likelihood of consumer confusion and canceled Defendant’s trademarks.  Defendant did not appeal the TTAB decision and continued to use the trademark without authorization from the Plaintiff.

Plaintiff filed suit to enjoin Defendant from using the GULFSTREAM trademark.  At first this may seem like an open and shut case because the TTAB found a likelihood of confusion.  However, the TTAB is an administrative body that determines whether a trademark may be registered with the Patent and Trademark Office.  Failing to register a trademark does not automatically mean that trademark infringement has occurred.

The Plaintiff will have to present it’s case to the District Court all over again.  It is likely that the Plaintiff can reuse a significant portion of the evidence it presented to the TTAB, however the District Court may not find the evidence as persuasive enough to find that trademark infringement has occured.

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