Financial data company sues competitor for trademark infringement. S&P GLOBAL v. S&P DATA

Trademark law in the United States favors the first party to use a trademark in commerce. 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 a claim to 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.

S&P GLOBAL INC. v. S&P DATA LLC, 1:20-cv-01865 (S.D.NY 2020) is an example of a case where the Polaroid factors will be a key element in determining whether trademark infringement has occurred.

The plaintiff is the world’s largest resource of business data, credit ratings, business research and data related to stocks, bonds and commodities indexes. The plaintiff maintains the famous S&P 500 index that is widely regarded as the best gauge of large cap United States equities and the United States economy as a whole. The plaintiff has been using the name S&P since the company was formed through a merger in 1941. The S&P 500 Stock index was introduced by the plaintiff in 1957. The plaintiff owns many federally registered trademarks for the trademark S&P alone or in combination with other words. Several of these trademarks are incontestable and through continuous use have become famous throughout the world.

The defendant in this case operates a call center that allows business to outsource customer service and other functions. One of the markets that the defendant focuses on is the financial services market. In advertisements the defendant refers to itself simply as S&P.

The plaintiff feels that the defendant’s actions constitute trademark infringement and filed suit in March of 2020. In its complaint the plaintiff alleges that the defendant is deliberately using S&P to market its services in an attempt to capitalize off the plaintiff’s goodwill. Even if customers eventually realize that they are not dealing with the plaintiff, the defendant’s use of S&P to generate initial customer interest is enough to constitute a violation of the Lanham Act. The plaintiff asks that the court enjoin the defendants from using the S&P trademark, that all advertising material for the defendant with the S&P trademark be destroyed and that the plaintiff be awarded damages.

The defendant has not responded to the complaint yet, however it is difficult to see how they can successfully argue consumer confusion is not likely.

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