Trademark dispute over blue octagon. ADT v. RING

Trademark dispute over blue octagon. ADT v. RING

In the United States using a trademark to brand products automatically grants the trademark user a claim to the trademark. The trademark rights associated with a symbol can be further strengthened by registering the symbol with the United States Patent and Trademark Office, but registration is not required. Trademark law grants a trademark user the exclusive right to the trademark on similar products. When someone other than the trademark user sells products that bear the trademark, that can be considered trademark infringement. Trademark infringement is the unauthorized use of a trademark on products in a manner that is likely to cause confusion, deception, or mistake about the source of the products.

When a trademark is copied and placed on products, it is relatively easy to prove that consumers were confused by the counterfeit trademark. When the trademark is not copied exactly, that makes it more difficult to prove that consumers were confused about the source of a product.

When presented with a trademark infringement case a court will apply the Polaroid factors. These factors are derived from a Court of Appeals for the Second Circuit decision, so courts in other circuits can have slightly different factors, but most courts follow a similar model. The Polaroid factors look at: 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 sell the same products as the Junior user, 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.

A case which will certainly include an analysis of the Polaroid factors is ADT LLC v. RING LLC, 9:21-cv-80762 (S.D.FL 2021).

The Plaintiff in this case is a company which provides home security and automation technology and services in the United States.  Plaintiff first began offering security monitoring and response services in 1874.  For several decades Plaintiff’s customers have been given a blue octagon sign to put in their window to indicate that the home has a security system made by the Plaintiff.  Plaintiff’s blue octagon is reproduced above on the right.  Plaintiff has 12 different trademark registrations for different styles of blue octagons.

Defendant in this case is a relatively young company.  Founded in 2013 as “Doorbot,” Defendant was discovered through the TV show Shark Tank. Defendant’s primary product is a door bell device which allows users to monitor their homes remotely.  In 2015 Plaintiff and Defendant has a partnership that lasted until 2017.   In 2018 Defendant was acquired by Amazon.

During Plaintiff and Defendant’s short partnership there were several disputes around.  One of those disputes revolved around the use of Plaintiff’s blue octagon trademark.  In 2016 Defendant began giving blue octagonal yard signs to customers.  An example of Defendant’s yard sign is reproduced above on the left.  Plaintiff sent Defendant a cease and desist letter claiming that the sign infringed on Plaintiff’s trademark.  Defendant stopped distributing the signs.  In late March 2021, Defendant began distributing a solid blue octagonal yard sign, again.  Plaintiff filed suit of trademark infringement alleging that Defendant is attempting to capitalize off of Defendant’s goodwill and reputation.

Defendant has not answered the complaint yet, however this case will most certainly turn on how well each party can demonstrate that the Polaroid factors turn in their favor.

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