CNG Financial Corporation v. Google Inc

Filing 33

MOTION for Leave to File Additional Authority in Support of its Response by Plaintiff CNG Financial Corporation, Counter Defendant CNG Financial Corporation. (Attachments: # 1 Exhibit Buying for the Home, LLC v. Humble Abode, LLC)(Hunter, Barry)

CNG Financial Corporation v. Google Inc

Doc. 33 Att. 1

Case 1:06-cv-00040-SSB-TSB

Document 33-2

Filed 11/02/2006

Page 1 of 18

Weslaw;
--- F.Supp.2d ----- F.Supp.2d ---, 2006 WL 3000459 (D.NJ.)
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Page 1

rn alleged infringement of trademark did not support

Briefs and Other Related Documents
Buying For The Home, LLC v. Humble Abode,

award of attorney fees under Lanham Act.

LLCD.NJ.,2006.0nly the Westlaw citation is
curently available.

FOR PUBLICATION United States District Cour,D. New Jersey. BUYING FOR THE HOME, LLC, Plaintiff,
v.

Motion granted in part and denied in part.

HUBLE ABODE, LLC, et a1., Defendants. Civil Action No. 03-cv-2783 (JAP).
Oct. 20, 2006.

il Trademarks 382T ~O
382T Trademarks The elements of a claim of unfair competition under

the Lanham Act are the same as for claims of unfair
competition and trademark infringement under New Jersey statutory and common law. Lanham Trademark Act, § 43(a), 15 U.S.CA. S 1125(a); NJ.S.A.

Background: Online retailer of bedroom furtue brought action against competitor alleging
infringement under Lanham Act, violation of New Jersey's Fair Trade Act, common law trademark
ingement and unfair competition, and defamation and trade disparagement under Lanham Act and state

56:4-1.

il Trademarks 382T ~O
382T Trademarks

law. Competitor counterclaimed alleging infringement, unfair competition, and false
advertising. Competitor brought motion for summary

Under the Lanham Act, a trademark becomes

judgment on trademark holder's claims and its
counterclaims .

incontestable after the owner files affdavits stating

that the mark has been registered, it has been in
continuous use for five consecutive years, and there
is no pending proceeding and there has been no

Holdings: The District Cour, Joel A. Pisano, 1., held
that:

adverse decision concerning the registrant's ownership or right to registration. Lanham TradeMark Act, § 1 et seq., 15 U.S.C.A & 1051 et seq.

il fact issue existed as to whether phrase TOTAL
trademark law;
il fact issue existed as to whether competitor

BEDROOM was valid and protectable under

il Federal Civil Procedure 170A ~O
170A Federal Civil Procedure
Genuine issue of material fact existed as to whether

purchased sponsored advertisement to be triggered by search phrase "total bedroom";
il email from thid part was hearsay;

phrase TOTAL BEDROOM was valid and
protectab1e under trademark law, precluding

summary judgment on trademark holder's infringement claim under Lanham Act. Lanham
Trade-mark Act, § 43(a), 15 U.S.

CA. & 1125(a);

il Lanham Act's "use" requirement was satisfied;
il competitor did not make defamatory statements of

Fed.Rules Civ.Proc.Rule 56. 28 U.S.C.A

il Trademarks 382T ~O
382T Trademarks

fact;
(Q fact issue existed as to whether comparative

Under the Lanham Act, where a mark has not been
federally registered, or, if registered, has not achieved

advertising was "fair use" of trademark;
il fact issue existed as to whether competitor made

incontestability, validity depends on proof of
secondary meanig, unless the umegistered mark is

false and misleading statements that were likely to
confse and deceive potential customers; and

inerently distinctive. Lanham Trade-mark Act, §
43(a), 15 U.S.CA. S 1125(a).

il Trademarks 382T ~O
(Ç 2006 Thomson/West. No Claim to Orig. u.s. Govt. Works.

Dockets.Justia.com

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bedroom furniture was owner of TOTAL
382T Trademarks

BEDROOM mark, in lawsuit alleging infringement

Marks that are suggestive, arbitrary, or fanciful are considered inherently distinctive and are entitled to protection under the Lanham Act. Lanham Trademark Act, § 43(a), 15 U.S.CA. & 1125(a).

under Lanham Act, where defendant competitor indicated in its statement of undisputed facts that
totalbedroom.com website was "owned or operated"
by retailer and exhibits submitted by competitor

il Trademarks 382T ~O
382T Trademarks

showed screen shots of website using TOTAL BEDROOM mark. Lanham Trade-mark Act, §
43(a), 15 D.S.CA. S 1125(a); Fed.Rules

Civ.Proc.Rule 56. 28 U.S.C.A

A mark that is not inherently distinctive is not
entitled to protection under the Lanham Act unless it
has attained a secondary meaning; a secondary

1i Federal Civil Procedure 170A ~O
170A Federal Civil Procedure
Genuine issue of material fact existed as to whether competitor purchased sponsored advertsement to be
triggered by search phrase "total bedroom,"

meaning is said to exist when the mark is interpreted
by the consuming public to be not only an

identification of the product or services, but also a
representation of the origin of those products or

services. Lanham Trade-mark Act, § 43(a), 12

precluding summary judgment on trademark holder's

U.S.CA. & 1125( a).

infringement claim under Lanham Act. Lanham Trade-mark Act, § 43(a), 15 U.S.CA. & 1125(a);
Fed.Rules Civ.Proc.Rule 56. 28 U.S.C.A

il Trademarks 382T ~O
382T Trademarks

Under the Lanham Act, a mark is considered to be
descriptive if it describes the purose, function or use

ll Federal Civil Procedure 170A ~O
170A Federal Civil Procedure

of the product or service, a desirable characteristic of the product or service, or the natue of the product or service; this is a mark that conveys an immediate idea
of the ingredients, qualities or characteristics of the

Email from "Franke and the (particular Internet search engine) AdWords Team," which stated that
competitor had not purchased term "total bedroom"

goods or services. Lanham Trade-Mark Act, § 1 et
seq., 15 U.S.CA. & 1051 et seq.

from search engine as keyword, and that it was possible that competitor's advertsement appeared
during search of phrase "total bedroom" because

00 Trademarks 382T ~O
382T Trademarks
For the purose of an infringement claim under the

"bedroom" was keyword that had been purchased by competitor, was hearsay, and could not be considered on motion for summary judgment, in lawsuit brought

by online retailer of bedroom futue alleging infringement under Lanham Act. Lanham Trademark Act, § 43(a), 15 U.S.CA. S 1125(a);

Lanham Act, a suggestive mark suggests rather than describes the characteristics of the goods; it requires

Fed.Rules Civ.Proc.Rule 56. 28 U.S.C.A

consumer imagination, thought, or perception to
determe what the product is. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.CA. & 1051 et seq.

I! Trademarks 382T ~O
382T Trademarks

I2 Trademarks 382T ~O
382T Trademarks

Lanham Act's "use" requirement was satisfied on
allegations that competitor purchased protected

A court may take judicial notice of trademark
registrations under the Lanham Act. Lanham TradeAct, § 1 etseq., 15U.S.CA. & 1051 etseq. Mark

trademark of online retailer of bedroom furntue as keyword on Internet search engine and competitor used that keyword to trigger commercial advertising
which included hypertext lin to competitor's

.l Trademarks 382T ~O
382T Trademarks

furniture retailing website; purchase of keyword was commercial transaction that occured "in commerce," and traded on value of mark of online retailer, and competitor's use was both "in commerce" and "in
connection with any goods or services." Lanham

Evidence was sufficient on summary judgment that would have enabled jury to find that online retailer of

Trade-mark Act, § 43(a), 15 U.S.CA. & 1125(a).

(Ç 2006 Thomson/est. No Claim to Orig. U.S. Govt. Works.

Case 1:06-cv-00040-SSB-TSB
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ru Libel and Slander 237 ~O

.l Libel and Slander 237 ~O
237 Libel and Slander
To succeed on a claim of defamation under New

237 Libel and Slander
Context is examined on a defamation claim under

New Jersey law because it bears upon the fair and
natual meaning of a statement.

Jersey law, a plaintiff must show: (1) that defendant made a defamatory statement of fact; (2) concernng

the plaintiff; (3) which was false; (4) which was
communicated to persons other than the plaintiff; and
(5) fault.

.l Libel and Slander 237 ~O
237 Libel and Slander

Competitor did not make defamatory statements of

.l Libel and Slander 237 ~O
237 Libel and Slander Whether the meaning of a statement is susceptible of

fact, for purose of retailer's defamation claim under New Jersey law, where actual statement or its context

could not be discerned, and to extent that statement was discemable, it was not defamatory or did not
refer to retailer.

a defamatory meaning under New Jersey law is a
question oflaw for the court.

ß1 Libel and Slander 237 ~O

I! Libel and Slander 237 ~O
237 Libel and Slander

237 Libel and Slander

Actual naming of the plaintiff is not a necessary
element in a defamation action under New Jersey law
so long as there is such reference to him that those

Generally, a statement that is communicated to thid parties is defamatory under New Jersey law if it is
false and tends to lower the subject's reputation in the

who read or hear the libel reasonably understand the
plaintiff

estimation of the community or to deter third persons from associating with him.

to be the person intended.

~ Libel and Slander 237 ~O
ll Libel and Slander 237 ~O
237 Libel and Slander
The elements of

237 Libel and Slander trade libel under New Jersey law are:

Whether a partcular statement is defamatory under
New Jersey law depends on its content, verifiability,
and context.

(1) publication; (2) with malice; (3) of false
allegations concerning its propert, product or

business; and (4) special damages, i.e. pecuniary harm.

I! Libel and Slander 237 ~O
237 Libel and Slander

IM Trademarks 382T ~O
382T Trademarks Under the Lanham Act, a mark provides protection

An evaluation of "content," for the purose of a defamation claim under New Jersey law, includes consideration of the statement's literal meanig as well as the fair and natual meaning that reasonable
people of ordinary intelligence would give to it.

not only for the product or service to which it is originally applied but also to related items or
services. Lanham Trade-Mark Act, § 1 et seq., 12 U.S.C.A. & 1051 et seq.

Il Libel and Slander 237 ~O
237 Libel and Slander
For the purose of a defamation claim under New

f251 Trademarks 382T ~O
382T Trademarks

Jersey law, verifiability refers to whether a statement

Common law trademark rights can be acquired when

can be proven tre or false, and statements that are
not verifiable, such as insults and name-calling, even if offensive, are not defamatory; similarly, opinons
are not actionable uness they imply false underlying facts.

a mark is actually used; such use occurs when the

mark is displayed or otherwise made known to
prospective purchasers in the ordinary course of

business in a manner that associates the designation

with the goods, services, or business of the user.
Restatement (Third) of

Unfair Competition. S 18.

(Ç 2006 Thomson/est. No Claim to Orig. U.S. Govt. Works.

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ßß Federal Civil Procedure 170A ~O
170A Federal Civil Procedure Genuine issue of material fact existed as to whether comparative advertising was "fair use" of trademark,
precluding surary judgment on infringement and

ru Trademarks 382T ~O
382T Trademarks

To prevail on a claim of false advertising under the Lanham Act, a party must prove: (1) the defendant
has made false or misleading statements as to his own

product or another person's; (2) there is actual
deception or at least a tendency to deceive a

unfair competition claims under Lanham Act.
Lanham Trade-mark Act, § 33(a), 15 U.S.C.A &

1115(a); Fed.Rules Civ.Proc.Rule 56. 28 U.S.C.A

substantial portion of the intended audience; (3) the deception is material in that it is likely to influence
purchasing decisions; (4) the advertised goods

f271 Trademarks 382T ~O
382T Trademarks

traveled in interstate commerce; and (5) there is a

likelihood of injury to the plaintiff in term of
decling sales, loss of good wil, et cetera. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.CA. & 1051 et
seq.

Nominative fair use under the Lanham Act occurs
when: (1) the alleged infringer uses the trademark

holder's mark to describe the trademark holder's

product, even if the goal of the accused infringer is to describe his own product; or (2) if the only practical way to refer to something is to use the trademarked term. Lanham Trade-mark Act, § 33(a), 15 U.S.C.A & 1115(a).

in Federal Civil Procedure 170A ~O
170A Federal Civil Procedure
Genuine issue of material fact existed as to whether

competitor made false and misleading statements that
were likely to confuse and deceive potential

f281 Trademarks 382T ~O
382T Trademarks

customers, precluding summary judgment on
trademark holder's false advertising claim under

Lanham Act. Lanham Trade-Mark Act, § 1 et seq.,
15 U.S.C.A. & 1051 et seq.; Fed.Rules Civ.Proc.Rule 56. 28 U.S.CA.

In a nomiative fair use case under the Lanham Act, the plaintiff first must prove that confusion is likely
due to the defendant's use of the mark; once the
plaintiff

has met its burden of showing a likelihood of

f321 Trademarks 382T ~O
382T Trademarks

confsion, the burden then shifts to defendant to show that its nominative use of plaintiffs mark is
nonetheless fair. Lanham Trade-mark Act, § 33(a), 15 U.S.CA. & 1115(a).

The Lanham Act does not contemplate a claim that
the filing of a lawsuit constitutes unfair competition.

Lanham Trade-mark Act, § 43(a), 15 U.S.C.A &

f291 Trademarks 382T ~O
382T Trademarks
All of the factors used to consider likelihood of

1125(a).

f331 Trademarks 382T ~O
382T Trademarks
Alleged infringement of trademark did not support

confsion in a traditional trademark infringement

case, except for degree of simlarity and strength of the mark, may be used in the likelihood of confsion test in a nomiative fair use case under the Lanham Act, but it will be up to the district cour in each case to determne which factors are appropriate to use
under the individual factual circumstances presented;

award of attorney fees under Lanham Act, on basis
that case was exceptional, where various issues

precluded summary judgment in favor of trademark holder, case presented novel issues of Internet
advertising rather than flagrant violations of well-

in determng which factors to use, the cour should be guided by its ultimate goal of assessing whether consumers are likely to be confsed by the use not
because of its nominative natue, but rather because

settled trademark law, and competitor had consulted counsel with regard to its use of trademarks at issue and included trademark disclaimers on its website.
Trademark Act of 1946, § 35(a), 15 U.S.CA. S

of the manner in which the mark is being

1117(a).

riominatively employed. Lanham Trade-mark Act, §

33(a), 15 U.S.CA. S 1115(a).

f341 Trademarks 382T =O

(Ç 2006 Thomson/West. No Claim to Orig. u.s. Govt. Works.

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382T Trademarks

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On a claim for an award reasonable attorney fees under the Lanham Act, a district cour must make a
finding of culpable conduct on the part of the losing
part, such as bad faith, fraud, malice, or knowing

A. Plaintifs Claims

The parties in this case are competitors in the

infringement, before a case qualifies as
"exceptiona1." Trademark Act of 1946, § 35(a), 12 U.S.C.A & 1117(a).

business of online furitue retailing.
Plaintiff/Counterclaim defendant Buying for the Home, Inc.FN1 ("Buying" or "Plaintiff') is a New
Jersey corporation that operates through its website "totalbedroom.com." Defendant Humble is also an
online fuiture retailer and does business through its

Trademarks 382T ~1800
382T Trademarks 382TXI Trademarks and Trade Names Adjudicated 382Tk1800 k. Alphabetical Listing. Most Cited Cases

website "humbleabode.com." Defendants James
principals of

Wickersham and Kris Kitterman are the founders and Humble.

Plaintiff brings this action alleging violations of Section 43(a) of the Lanham Act, 15 D.S.C. S
1125(a), and New Jersey's Fair Trade Act, NJ.S.A.
56:4-1, as well as common law trademark

Trademarks 382T ~1800
382T Trademarks 382TXI Trademarks and Trade Names Adjudicated 382Tk1800 k. Alphabetical Listing. Most Cited Cases

infringement, common law unfair competition,
defamation and trade disparagement. Specifically, Plaintiff asserts that (1) by causing a sponsored ad to
appear next to the results on the Google search

HULE ABODE.
TOTAL BEDROOM.

engine when a computer user enters the search phrase "total bedroom," defendant Humble misappropriated Plaintiffs mark "TOTAL BEDROOM" in connection with the sale of goods and violated Section 43(a) of

the Lanham Act in that such use was likely to communicate a false designation of origin of those

Richard F. Collier. Jr., Coller & Basil, P.C.,
Princeton, NJ, for Plaintiff.

goods; and (2) Defendants have "made false
statements to (Buying's) vendors, suppliers and other

Ronald D. Coleman, Bragar, Wexler & Eagel, PC,
New York, NY, for Defendants.

thid parties with whom (Buying) does business
regarding (Buying's) allegedly improper business

practices, including ... (Buying's) failure to comply

OPINION
JOEL A. PISANO, District Judge.
*1 Before the Cour is Defendants' motion for

with copyright laws and the Internet policies of thid parties." Comp1. at ir 12. Defendants have moved for summary judgment and seek dismissal of all of these

summary judgment as to all counts in Plaintiffs
complaint and as to Counts Two (Trademark
Infingement), Three (Unfair Competition) and Four

claims. Plaintiff has not cross-moved for summary
judgment.

(False Advertising) of defendant Humble Abode, Inc.'s ("Humble") counterclaims and thid party claims. Also before the Cour is Plaintiffs request
that the Cour strike Humble's request for attorney

B. Humble's Counterclaims and Third Party Claims

Humble has also moved for summary judgment on its
counterclaims. and thid part claims, which allege

fees with respect to Humble's Lanham Act claims.

The Cour decides these matters without oral
argument pursuant to Fed.R.Civ.P. 78. For the

trademark infringement, unfair competition and false advertising in violation of the Lanham Act and state
law against Buying and thid part defendant Steve

reasons discussed below, Defendants' motion for summary judgment is granted in part and denied in
part, and Plaintiffs motion to strike Humble's request for attorney fees is granted.

Ross. Humble alleges that Buying undertook

aggressive "attacks" against Humble through its
various futue-related websites, including
totalbedroom.com, and that in doing so, the third

part defendants improperly used the mark

I. Background

HUBLE ABODE as well as the Humble's unique

product names, in which Humble claims it has

(Ç 2006 Thomson/est. No Claim to Orig. U.S. Govt. Works.

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trademark rights. Although not entirely clear from
Humble's papers, it appears that Humble's trademark

or "materia1." Anderson v. Libertv Lobbv. Inc.. 477
U.S. 242. 248. 106 S.C!. 2505. 91 L.Ed.2d 202

infringement, unfair competition and false
advertising claims under both federal and state law

(1986). A material fact raises a "genuine" issue "if
the evidence is such that a reasonable jury could

are based upon the following allegations: (1)
totalbedroom.com offered a "Price Comparison"

return a verdict" for the non-moving party. !d.
On a summary judgment motion, the moving part

page that used the mark HUMBLE ABODE as well as Humble's product names and allowed online
customers to compare Total Bedroom's prices with

Humble Abode's prices; (2) totalbedroom.com users
could search the totalbedroom.com website using

Humble Abode product names; (3) directlyhome.com

uses Humble Abode product names to reference
products on their website; (4) buyingfurniture. com, a

website on which consumers purortedly can share
informtion about "hot deals" on futue, uses

must show, first, that no genuine issue of material fact exists. Celotex Corp. v. Catrett. 477 U.S. 317. 323. 106 S.C!. 2548. 91 L.Ed.2d 265 (1986). If the moving party makes this showing, the burden shifts to the non-moving part to present evidence that a genuine fact issue compels a tria1. Id. at 324. In so presenting, the non-moving part may not simply rest on its pleadings, but must offer admssible evidence that establishes a genuine issue of material fact, id.,
not just "some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio

HUBLE ABODE as well has Humble's product
names on its site; (5) totalbedroom.com has caused its sponsored advertisement to appear when users of the search engine Google conducted a search for the

Corv.. 475 U.S. 574. 586. 106 S.C!. 1348.89 L.Ed.2d
538 (1986).

term HUBLE ABODE FURITUR as well as
Humble's product names; (6) when a user of the

The Cour must consider all facts and their logical

Yahoo! search engine conducts a search for

HUBLE ABODE SAVINGS or HUMBLE
ABODE DISCOUNT, lins to totalbedroom.com,
buyingfurniture.com and buying-furniture.

inferences in the light most favorable to the nonmoving party. Bailev v. United Airlines. 279 F.3d
194. 198 (3d Cir.2002). The Court shall not "weigh

biz (a

website that, according to Humble, is identical to buyingfurniture.com) appear in the top six results retued as a result of the websites' use of the term
"humble abode" in their text.

the evidence and determe the trth of the matter," but need determe only whether a genuine issue
necessitates a tria1. Anderson. 477 U.S. at 249. If

the

non-moving part fails to demonstrate proof beyond
a "mere scintila" of evidence that a genuine issue of

material fact exists, then the Court must grant
*2 In its request for relief on its claims, Humble
seeks, among other things, an award of attorney fees. On an earlier motion by Plaintiff, the Cour strck all of Humble's attorney fees requests with the exception of those that relate to its Lanham Act claims. As to those claims, the Cour denied Plaintiffs motion

summary judgment. Country Floors. Inc. v. Gevner.
930 F.2d 1056. 1061-62 (3d Cir.1991).

B. Defendants' Motion for Summary Judgment on
Plaintifs Claims

without prejudice. Plaintiff now renews his motion
and asks the Cour to strike the remaining attorney fee request.
1. Trademark Claims

il Plaintiff has alleged that Defendants' use of the

II. Legal Discussion
A. Summary Judgment Standard

mark TOTAL BEDROOM violated (1) Section 43(a)

of the Lanham Act, which prohibits unfair
competition through "(fJalse designations of origin," see 15 D.S.C 1125(a); FN2 and (2) New Jersey

statutory and common law prohibiting trademark
A cour shall grant summary judgment under Rule
infringement and unfair competition. Because the
elements of a claim of unfair competition under the

56(c) of the Federal Rules of Civil Procedure "if the
pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if

Lanham Act are the same as for claims of unfair competition and trademark infringement under New

any, show that there is no genuine issue as to any
material fact and that the moving part is entitled to a
judgment as a matter of law." Fed.R.Civ.P. 56(c).

Jersey statutory and common law, the Cour's analysis below extends to Plaintiffs state law claims
as well. See J & J Snack Foods. Corvo v. Earthgrains Co.. 220 F.Supp.2d 358. 374 (D.N.1.2002) ("(T)he

The substantive law identifies which facts are critical

(Ç 2006 Thomson/est. No Claim to Orig. U.S. Govt. Works.

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elements for a claim for trademark infringement

identification of the product or services, but also a
representation of the origin of those products or

under the Lanham Act are the same as the elements for a claim of unfair competition under the Lanham
Act and for claims of trademark infringement and

services." Commerce Hat'l Ins. Serv., Inc. v.
Commerce Ins. A£ency. Inc.. 214 F.3d 432. 438
(2000) (quoting Scott Paver Co. v. Scott's Liauid
Gold,

unfair competition under New Jersey statutory and common law...."); Harlem Wizards Entertainment
Basketball. Inc. v. HBA Proverties. Inc., 952 F.Supp.

Inc., 589 F.2d 1225.1228 (3d Cir.1978)).

1084. 1091 (D.NJ.1997) ("N.J.S.A. 56:4-1 is the

statutory equivalent of Section 43(a)(1) of the
Lanham Act").

il Defendants argue that TOTAL BEDROOM is not a valid and protectable mark because it is merely
descriptive and has not acquired a secondary

*3 To prove unfair competition under the Lanham Act, a plaintiff must show that: (1) the mark at issue is valid and legally protectable; (2) the mark is owned by the plaintiff; (3) the defendant used the mark in

meaning. A mark is considered to be descriptive if it "describe(s) the purose, function or use of the product (or service), a desirable characteristic of the
product (or service), or the natue of the product (or

commerce on or in connection with any goods or services or container for goods; and (4) this "use"

service)." J & J Snack, 220 F.Supp.2d at 370. This is a mark that "conveys an immediate idea of the ingredients, qualities or characteristics of the goods
(or services)." Jews for Jesus, 993 F.Sup? at 297

was in a manner likely to create confsion
concerning the origin of the goods or services. 12
U.S.C. & 1125(a); 800-JR Cigar, Inc. v. Go To. com,

Inc., 437 F.Supp.2d 273.281-82 (D.NJ.2006) (citing Fisons Horticulture, Inc. v. Vigoro Industries, Inc.,
30 F.3d 466. 472 (3d Cir.1994)). Defendants argue

(alteration in original). In support of their argument that TOTAL BEDROOM is descriptive, Defendants point to the case of Lee;ay v. Bed. Bath & Bevond,
Inc., 942 F.Su?p. 699 (D.Mass.1996), in which the cour found on an application for injunctive relief that

that Plaintiffs trademark claims must be dismissed

the phrase BED & BATH was descriptive for a store
that sells items for the bedroom and bathoom.

because (1) TOTAL BEDROOM is not an
protectable trademark; and (2) there is no factual
support for Plaintiffs claim of "infringement by

*4 rn Plaintiff counters that (1) TOTAL

search engine."

BEDROOM is not descriptive as applied to futue
products and Defendants have not cited to one
example where the term is used to describe fuitue;

a. Validity and Protectabilty of

Trademark

(2) TOTAL BEDROOM was once registered by a
thid part FN4 so it cannot be a descriptive mark; (3)

f21 r31 f 41 The theshold issue is whether the phrase

TOTAL BEDROOM is an inerently distinctive
suggestive FN5 mark and, consequently, proof of a

TOTAL BEDROOM is valid and protectable under trademark law. Where, as here, a mark has not been
federally registered (or, if registered, has not

secon ary meamng is not necessary; - an in

d .. ~ d(4)'

any event, Defendants are not entitled to summary

achieved incontestability FN3) "validity depends on
proof of secondary meanig, uness the unegistered mark is inherently distinctive." Fisons Horticulture, 30 F.3d at 472.
il In evaluating the distinctiveness of a mark, the
distinctiveness) are used: (1) generic; (2) descriptive;

judgment because the characterization of a mark is a factual issue for the jury. In support of its argument

that TOTAL BEDROOM is inerently distinctive,
Plaintiff has pointed to the fact that the Trademark & Patent Offce has registered other marks that include

following categories (in ascending order of
(3) suggestive; (4) arbitrary; or (5) fancifu1. Two

the word "total"-TOTAL WELLNESS, TOTAL HOME SERVICES, TOTAL FITNESS YVES

SAINT LAURNT, TOTAL EFFECTS
BEAUTIFUL SKI & WELLNESS, as well as to the
prior registration of TOTAL BEDROOM.FN7

Pesos, Inc. v. Taco Cabana, Inc.. 505 U.S. 763. 768. 112 S.Ct. 2753. 120 L.Ed.2d 615 (1992). Marks that
are suggestive, arbitrary, or fanciful are considered

Although not cited to expressly by Plaintiff, it
appears that Plaintiff is arguing that because a mark that is merely descriptive will be refused registration
under § 2( e)(1) of the Lanham Act, TOTAL

inerently distinctive and are entitled to protection.
Jews for Jesus v. Brodsky, 993 F.Supp. 282. 296

(D.NJ.1998). A mark that is not inherently
distictive is not entitled to protection uness it has

BEDROOM cannot be descriptive.

attained a secondary meaning. Id. A secondary

The Third Circuit has expressly stated that "the
characterization of a mark is a factual issue for the
jur." Ford Motor Co. v. Summit Motor Prods., 930

meaning is said to exist when the mark "is interpreted

by the consumig public to be not only an

(Ç 2006 Thomson/est. No Claim to Orig. U.S. Govt. Works.

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F.2d 277. 292 n. 18 (3d Cir.1991 ). Because the

characterization TOTAL BEDROOM is a fact that is material to this case, the Cour's role on this motion is to determne whether a genuine issue exists as to this fact. Said another way, the Court must determne "if
the evidence is such that a reasonable jury could

there is no more than a mere "scintila of evidence" supporting a non-moving party's claim, see Countrv

retu a verdict" for the non-moving party on this

particular issue. Anderson, 477 U.S. at 248. The
court may not "engage in any weighing of the

Floors. Inc. v. Gevner, 930 F.2d 1056. 1061-62 (3d Cir.1991), the Cour finds that the dearth of evidence supporting Defendant's argument on this motion combined with the limited evidence presented by Plaintiff makes it inappropriate resolve the issue of the characterization of Plaintiffs mark on summary judgment. The Cour finds that there exists a genuine
issue of material fact as to the validity and
protectability of

evidence; instead, the non-moving part's evidence 'is to be believed and all justifiable inferences are to be drawn in his favor.' " Marino v. Indus. Cratin£ Co., 358 F.3d 241. 247 (3d Cir.2004) (quoting
Anderson, 477 U.S. at 255).
As stated above, on a motion for summary judgment the moving part bears the initial burden of showing
that no genuine issues of material fact exist. Celotex

Plaintiffs mark.

b. Ownership of

the Mark

I1 There appears to be little dispute regarding
Plaintiffs ownership of the mark, although a single

sentence in Defendants' brief baldly states that
"(t)here is little support for plaintiffs asserton that it owns a trademark." Pi. Brf. at 15. In its statement of undisputed material facts, however, Defendants state
that the website totalbedroom.com is "owned or

Corp., 477 U.S. at 323. "(W)ith respect to an issue on which the nonmoving party bears the burden of proof ... the burden on the moving party may be discharged
by 'showing' -that is, pointing out to the district courthat there is an absence of evidence to support the nonmoving part's case." Celotex Corv., 477 U.S. at

operated" by Plaintiff. Exhbits submitted by

Defendants show screen shots of this website using

325. In Defendants' brief, after discussion of the
applicable trademark law, the entiety of Defendants

the mark TOTAL BEDROOM. Consequently, there is suffcient evidence pursuant to which a jury may

argument with respect to the distinctiveness issue is set forth in the following two sentences:

find that plaintiff is the owner of the mark. See

McCarty on Trademarks & 16:35 (4th ed.)
("Trademark ownership inures to the legal entity who

For example, BED & BATH was found to be
descriptive for a store that sells items for the bedroom
and bathroom in Lee;ay v. Bed, Bath & Beyond, Inc.,

is in fact using the mark as a symbol of origin.").

942 F.Supp. 699 (D.Mass.1996). TOTAL

BEDROOM describes what plaintiff sells, just as BED & BATH describes (what) the store using that
mark sells.
*5 Pi. Brief at 13

c. Use of

the Mark

il Plaintiff claims that Defendants misappropriated

the mark TOTAL BEDROOM by causing an
advertisement and a lin for Humble's website to

appear on the Google search engine when the search
In those two sentences Defendants have not met their burden of showing an absence of a genuine issue as
to the validity or protectability of Plaintiffs mark.

phrase "total bedroom" was entered by a user.
Defendant argues that this claim should be dismissed
because "there is simply no proof that defendants

Unlike in the present case, the Defendant in Leejay,

ever actually purchased plaintiffs ... business name
as a search term." PI. Brf. at 15. However,

the case relied upon by Defendants, submitted "a

number of examples of retail stores' advertisements where the phrase 'bed and bath' or 'bed & bath' (had been) used to refer to bedroom and bathoom items." 942 F.Supp. at 701. Defendants here have pointed to no evidence whatsoever in support of their statement that "total bedroom" describes what Plaintiff sells, and, as Plaintiff points out, certainy nothing showing
that "total bedroom" has been used

considering the applicable standard on summary judgment, the Cour finds that a genuine issue of fact exists in this regard.
According to the deposition testimony of thid-part

defendant Steve Ross and as shown in certain web
page screens shots submitted by Defendant, the

or is generally

understood to refer to fuitue.

sponsored advertisement for Humble Abode did not appear when Ross performed Google searches using
the term "total" or the term "bedroom," but the

Although it is tre that a factual issue may be resolved by a cour on summary judgment where

advertisement did appear when he used the phrase "total bedroom" as a search term. Thus, taking into

cg 2006 Thomson/est. No Claim to Orig. U.S. Govt. Works.

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account the fact that the Cour must consider all facts
To be actionable under § 43(a) of

the Lanham Act, a

and logical inferences in favor of the non-moving

defendant's "use" of a plaintiffs mark must be "in
commerce" and "on or in connection with any goods
or services, or any container for goods." FN9 12'

part, a fair inference may be drawn that Humble
purchased the sponsored advertisement to be
triggered by the search phrase "total bedroom."
*6 .u Defendants point to an email from "Frankie

U.S.C. 1125(a). In this regard, cours presented with
claims similar to those in the present case involving

the purchase or sale of trademarks as search engine

and the Google AdWords Team" that states that
Defendants have never purchased from Google the

keywords generally have examined whether the
defendant's alleged "use" of the mark constituted a
"trademark use" generally, i.e., commercial use of

term "total bedroom" as a keyword and it was
possible that Humble's ad appeared during a search of the phrase "total bedroom" because "bedroom" was a
keyword that had been purchased by Humble.

the

mark as a trademark, e.g., 800-JR Cigar, Inc., v. Goto.com, Inc., Civil Action No. 00-3179, 2006 WL
1971659. *6-8 (D.N.1. Julv 13. 2006), or have

However, Plaintiff correctly points out this email is hearsay, and generally may not be considered on a motion for summary judgement. See Philbin v. Trans.
Union Corp., 101 F.3d 957. 961 n. 1 (3d Cir.1996) (noting that a hearsay statement that is not capable of

examied "use" by looking more specifically at the

definition of "use in commerce" under the Lanham
Act/N10 e.g., Merck & Co. v. MSD Technology, L.P., 425 F.Supp.2d 402. 415-16 (S.D.N.Y.2006). The

being admissible at trial should not be considered on
a summary judgment motion); Blackburn v. United
Parcel Serv., 179 F.3d 81. 95 (3d Cir.1999) (same).

Thid Circuit has not spoken on the issue of whether the purchase and/or sale of keywords that trigger

advertising constitutes the tye of "use"
other cours that have addressed the issue are

contemplated by the Lanham Act, and decisions from
conficting. In a recent decision in the Southern

Neverteless, even if the Court were to consider the

contents of the email, the Cour finds that the letter
only creates a genuine issue of material fact and does not itself entitle Defendant to summary judgment.

District of New York, Merck & Co. v. MSD Technology, plaintiff drg company brought an
action against various Canadian entities that operated

LU This does not entirely resolve the issue of
Plaintiffs "search engine" claims, however, because as both the Plaintiff and Defendant candidly point
out, the law is unsettled regarding whether the

online pharmcies alleging, inter alia, unfair
competition and trademark infringement under

federal and state law. The Canadian entities had
purchased from the Internet search engine companies

purchase of another's protected mark as a search
engine keyword can constitute unfair competition or
infringement. The Cour, therefore, must examie the

validity of Plaintiffs legal theory of "infringement by

Google and Yahoo! the right to have links to their website displayed as "Sponsored Links" when a computed user conducted a search using plaintiffs mark ZOCOR. The cour, in granting defendant's
motion to dismiss, found that *7 in the search engine context, defendants to do not

search engine" and whether the facts alleged, if
proven, state a1 aim . D fì en ants.c . against e d FN8

'place' the ZOCOR marks on any goods or
Plaintiff alleges Defendants purchased advertising
lined to the search term TOTAL BEDROOM from
the search engine company Google. Google, as well as other search engines, "sell ( s) advertising linked to
search term, so that when a consumer enters a
partcular search term, the results page displays not

containers or displays or associated documents, nor do they use them in any way to indicate source or sponsorship. Rather, the ZOCOR mark is "used" only
in the sense that the computer user's search of the

keyword "Zocor" will trigger the display of the
sponsored lins to defendants' websites. This internal

only a list of Websites generated by the search engine program using neutral and objective criteria, but also

use of the mark "Zocor" as a key word to trigger the display of sponsored lins is not use of the mark in a
trademark sense.

lins to Websites of paid advertisers (listed as
'Sponsored Links')." Gov't Employees Ins. Co. v.
Goo£le, Inc., 330 F.Supp.2d 700. 702 (E.D.Va.2004).
The advertisement and lin to Humble Abode's

Merck & Co.. 425 F.Supp.2d at 415.

website appeared on the far right of the screen,
separate and apart from the search results list, under
the heading "Sponsored Lins." Humble's

Another district court addressing similar claims on
similar facts found differently. In Edina Realty, Inc.

v. The MLSonline.com, Civ. 04-437IJRTFLN. 2006

advertisement does not display the mark TOTAL
BEDROOM.

WL 737064 CD.Minn. March 20. 2006), the defendant, a direct competitor of plaintiff, had
purchased from Google and Yahoo! search term that

(Ç 2006 Thomson/est. No Claim to Orig. U.S. Govt. Works.

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were identical or similar to plaintiffs EDINA REALTY trademark. In denying the defendant's
motion for summary judgment, the Cour found

*8 The Court is mindful of the challenges that
sometime arise in applying existing legal principles in the context of newer technologies. As expressed by
the Edina Realty cour, supra, Defendants' alleged

defendants use of the mark constituted a "use in
commerce" under the Lanham Act, holding:
While not a conventional "use in commerce,"

use of Plaintiffs mark is certainy not a traditional

"use in commerce." 2006 WL 737064 at *3.
Nonetheless, the Cour finds Plaintiff

defendant nevertheless uses the Edina Realty mark commercially. Defendant purchases search terms that

has satisfied the

"use" requirement of the Lanham Act in that
Defendants' alleged use was "in commerce" and was

include the Edina Realty mark to generate its
sponsored lin advertisement. See Brookfield

"in connection with any goods or services." 12
the keyword was a commercial transaction that occured
U.S.C 1125(a)(1). First, the alleged purchase of

Communs., Inc. v. W Coast Entm't Corv.. 174 F.3d

1036. 1064 (9th Cir.1999) (finding Internet metatags
to be a use in commerce). Based on the plain

meaning of the Lanham Act, the purchase of search
terms is a use in commerce.
Edina Realty, 2006 WL 737064 at *3.
Similar actions brought against defendants who

"in commerce," trading on the value of Plaintiffs mark. Second, Defendants' alleged use was both "in

commerce" and "in connection with any goods or services" in that Plaintiffs mark was allegedly used to trigger commercial advertising which included a

lin to Defendants' fuitue retailing website.
Therefore, not only was the alleged use of Plaintiffs mark tied to the promotion of Defendants' goods and retail services, but the mark was used to provide a

engage in the sale of the search term, as opposed to
the purchasers of those term, have likewise reached

differing conclusions concerning "use." Compare
Rescuecom Corvo v. Google, Inc.. No. 5:04-cv-1055.

computer user with direct access (i.e., a link) to
Defendants' website through which the user could

2006 WL 2811711 (Sept. 28. 2006) (granting Google's motion to dismiss finding that "in the
absence of allegations that defendant placed

make fuitue purchases. The Cour finds that these
allegations clearly satisfy the Lanham Act's "use" requirement.
The Cour stresses that ths finding does not in any way bear upon whether Defendants' alleged use of

plaintiffs trademark on any goods, displays,
containers, or advertisements, or used plaintiffs
trademark in any way that indicates source or origin,

plaintiff can prove no facts in support of its claim which would demonstrate trademark use") with 800JR Cigar, Inc., v. Goto.com, Inc., Civil Action No.

Plaintiffs mark was unlawfuL. That can only be

determed upon an examination of all of the
elements of Plaintiffs claims, including whether the

00-3179, 2006 WL 1971659. *8 (D.N.1. July 13. 2006) (denying surary judgment and finding
suffcient evidence to support claim that defendant

use of the mark was likely to confse or deceive

consumers about the affiliation of Defendants' goods and service with Plaintiff. See Gov't Emples. Ins. Co.
v. Google, Inc., 330 F.Su?p.2d 700. 704

made "trademark use" of plaintiffs mark where defendant (1) accepted bids on the plaintiffs
trademark from the plaintiffs competitors, thereby
trading on the value of the marks; (2) ranked paid

(E.D.Va.2004) ("Where keyword placement of ...
advertsing is being sold, the portals and search

engines are taking advantage of the drawing power

advertisers before "natual" listings among the search

and goodwill of these famous marks. The question is
whether ths activity is fair competition or whether it is a form of unfair free riding on the fame of well-

results, thereby acting as a conduit to steer
competitors away from plaintiff; and (3) suggested
search terms including the plaintiffs trademarks to

known marks.") (alteration in original) (quoting L
Thomas McCarthv. McCarthy on Trademarks &

the plaintiffs competitors); Google v. American Blind & Wallvaver Factorv, Inc., No. 03-05340. 2005 WL 832398 (N.D.Cal. Mar.30. 2005) (denying motion to dismiss in light of the unsettled state of the law with respect to actionable "use" of a trademark in the search engine context); GEICO v. Google, Inc., 330 F.Supp.2d 700 (E.D.Va.2004) (denying motion to

Unfair Competition & 25:70.1 (2004)). As
Defendants have not challenged the "likelihood of

confsion" element of Plaintiffs claims on this
motion, neither part has presented arguments or

evidence on the issue. For this reason as well as others discussed above, the Cour must deny
Defendants' motion as it relates to Plaintiffs unfair
competition and infringement claims.

dismiss finding allegations that defendant allowed advertsers to bid on trademarks as search term and
to pay for advertising lined to trademarks were

suffcient to establish trademark use).
2. Defamation and Trade Disparagement Claims

(Ç 2006 Thomson/est. No Claim to Orig. U.S. Govt. Works.

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at Legett & Platt about Total Bedroom, Directly

Defendant also seeks summary judgment as to
Plaintiffs defamation and trade disparagement

Home, essentially, the plaintiff in this case,"
Wickersham answered in the affrmtive. Id. at 30a.
v) Wickersham spoke to Humble's new account

claims, arguing that Plaintiff cannot establish all of the necessary elements of its claims. Plaintiff alleges
with respect to its defamation claim that "Defendants,

including Wickersham and Kitterman, have made multiple misrepresentations and false statements to
various third parties about Buying's business

representative at Leggett & Platt about "who Bella Ross is. If she is an employee of Leggett & Platt or if she's a contractor or, you know, how... this triangle could happen ... without me knowing that my own
supplier's son is competing against me." !d. at 34a.

practices." CompI. at 45. With respect to its trade
disparagement claim, Plaintiff alleges that these same

Defendants "have made multiple, disparaging
misrepresentations regarding Buying's business

iv) In a conversation with an uramed person from a
company called Elegant Abode, Wickersham
"mention( ed) that we have a confict of interest with

operations to Buy(ingJ's suppliers and vendors with

whom it deals in the furtue business." Id. at ir 51.

Specifically, Plaintiff points to the following
communications as testified to by Wickersham as his deposition: *9 i) Wickersham sent an email to Google that stated as follows:

(Total Bedroom's) website.

Hi. I'm with Humble Abode, LLC. We spend a significant amount on advertising with Google.
Recently, a competitor of ours started bidding on our
company name through AdW ords in order to steal

vii) When asked whether he ever spoke to anyone at "San Francisco Market" about Buying for the Home, Wickersham testified that "the name may have come up where we felt we had a conflict of interest here, and the we had asked Leggett & Platt multiple times to get us a new account rep. And we were not at all

happy with Bella Ross and Dan Ross seeing our
proprietary informtion with their son and brother

being Steve Ross." !d. at 66a. He fuher stated that
he ''just expressed (his) frstration that (Humble's)

customers. What is Google's advertising policy

regarding competition and allowing bidding on
trademarked company names as phrases? Thank you. (Certfication of Richard Collier at 19a)

account rep's son is competing and appears to be
targeting our business."

The above deposition testimony is the only evidence
presented by Plaintiff in response to Defendants'

ii) Wickersham communicated with Yahoo by email,
fax or phone (he did not remember which) asking

motion. As an initial matter, this evidence shows that Wickersham is the only defendant to whom any
alleged defamatory statements have been attibuted.

"what their policy is with regard to trademark
infringement." Collier Cert. at 25a. Specifically, he

asked about "where competitors might be able to use
trademarks to be able to be found or for search

Therefore, Plaintiffs defamation and disparagement claims shall be dismissed as to all other defendants.
*10 With respect to Wickersham, the Cour will first address Plaintiffs defamation claim. In response to Defendants' motion, Plaintiff asserts that "merely by
introducing Humble's deposition testimony admitting

puroses or rankng puroses." !d. at 26a.

Wickersham mentioned the Total Bedroom website in the communication in that he "encouraged (Yahoo)

to take a look at it." Id at 27a. He also "let them
know that (he) believe(d) we have a situation here, where one of (Yahoo's) advertisers, Steve Ross, is
infringing on (Humble's) trademarks." Id. at 28a.

publication of the statements in question, Buying has
established a prima facie case of defamation ... (and)

this claim must be denied ." PI. Brf. at 8. In so arguing, it appears that
Humble's motion seeking dismissal of

iii) Wickersham made a phone call to an uramed person at a company called Couristan, for whom

Plaintiff misapprehends his burden on a summary
judgment motion.
f141f151 To succeed on a claim of defamation, a

Bella Ross and Dan Ross (alleged to be thid party defendant Steve Ross' mother and brother,
respectively) were Humble's account representatives. Wickersham spoke to "Bella's boss" and advised him

plaintiff must show "( 1) that Defendant made a
defamatory statement of fact; (2) concernng the

that "we have a confict of interest here, and would
like new account reps." !d. at 29a.

Plaintiff; (3) which was false; (4) which was
communicated to persons other than the Plaintiff; and

iv) When asked whether he "complain(ed) to anyone

(5) fault." Mayflower Transit, LLC. v. Prince, 314 F.Supp.2d 362. 372 (D.N.J.2004) (citing Ta; Mahal

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Travel. Inc. v. Delta Airlines. Inc.. 164 F.3d 186 (3d
Cir.1 998)). As to the first element, "( w )hether the

reasonably understand the plaintiff to be the person
intended." D¡;kstra v. Westerink, 168 N.J.Super. 128. 401 A.2d 1118 (App.Div.1979). However, Plaintiff

meaning of a statement is susceptible of a defamatory

meaning is a question of law for the cour." Hi££ins
v. Pascack Valley Hosv., 158 N.J. 404. 426. 730 A.2d

327 (1999) (quoting Ward v. Zelikovsky. 136 N.J. 516.529.643 A.2d 972 (1994)). Therefore, the Cour must first determne whether the statements described by the deposition testimony above can be considered
defamatory statements of fact.

has produced no evidence from which the Cour can conclude that the person who received this message reasonably understood it to refer to Plaintiff. First, Plaintiff does not establish who the actual recipient
is.FN11 The most that can be inferred from the

deposition testimony is that the email was sent to

"Google." Second, although Plaintiff argues that "Go ogle" can identify Plaintiff by checking its
Adwords records of recent bidding, Plaintiff has not established that it was the only part bidding on the phrase "humble abode" through Adwords.
*11 Additionally, Plaintiff has not even attempted to

f161ri 71f81f191r201 Generally, a statement that is

communicated to third parties is defamatory if it is
false and "tends to lower the subject's reputation in

the estimation of the communty or to deter thid
persons from associating with him." Lynch v. New Jersey Educ. Ass'n, 161 NJ. 152. 164-65.735 A.2d

provide any evidence to establish that any of the
statements by Wickersham were false. Having failed to make a suffcient showing as to all of the elements
of its claim, Plaintiff cannot defeat Defendant's

1129 (1999). Whether a particular statement is
defamatory depends on its "content, verifiability, and context." !d. at 167. 735 A.2d 1129. An evaluation of
"content" includes consideration of the statement's

motion for summary judgment. As the Supreme

literal meanig as well as "the fair and natual
meaning that reasonable people of ordinary
intelligence would give to it." Id Verifiability refers

Cour has stated
(T)he plain language of Rule 56(c) mandates the entry of surary judgment, after adequate time for

to whether a statement can be proven tre or false,
and statements that are not verifiable, such as insults

discovery and upon motion, against a part who fails

to make a showing suffcient to establish the
existence of an element essential to that part's case,
and on which that part wil bear the burden of proof

and name-calling, even if offensive, are not
defamatory. !d. Similarly, opinons are not actionable uness they imply false underlying facts. Id The last

at triaL. In such a situation, there can be "no genuine

component, context, is examined because it bears upon the "fair and natual meaning" of a statement.
!d. at 168. 735 A.2d 1129.
ii Examining Wickersham's deposition testimony

issue as to any material fact," since a complete failure

of proof concernng an essential element of the
nonmoving part's case necessarily renders all other
facts immateriaL. The moving part is "entitled to a judgment as a matter of law" because the nonmoving
part has failed to make a suffcient showing on an

excerpts listed above, the Cour finds that all but the first one require very little discussion. Plaintiff has
simply not established that the communications

essential element of her case with respect to which
she has the burden of proof.
Celotex Corvo v. Catrett. 477 U.S. 317. 322-23. 106

described in excerpts numbered ii through vii above are "defamatory statements of fact." In many cases the deposition testimony pointed to by Plaintiff is not specific enough to discern the actual statement or its
context. To the extent that a statement may

S.Ct. 2548. 91 L.Ed.2d 265 (1986).
rn Plaintiffs trade disparagement claim fails as

discernable, it is not defamatory and/or does not refer
to Plaintiff.

well. The elements of trade libel are: (1) publication; (2) with malice; (3) of false allegations concerng its
propert, product or business, and (4) special

(22) The first excerpt listed requires just slightly more discussion. It describes an email sent to Google in which Wickersham refers to "a competitor" who is

damages, i.e. pecunary harm. Mayf!Olver Transit. 314 F.Supp.2d at 378. See also Patel v. Soriano, 369 N.J.Super. 192. 247. 848 A.2d 803 (App.Div.2004)

attempting to "steal customers" by bidding on
Humble's company name through Adwords. On its

face, this email does not refer by name to Plaintiff or
its website. It is tre, as Plaintiff argues, that the

(proof of damages is essential in an action for trade libel). Plaintiff has made no attempt to provide any evidence of malice, falsity or damages. Accordingly,
Defendants' motion shall be granted with respect to
Plaintiffs defamation and trade disparagement

actual naming of Plaintiff is not a necessary element
in a defamation action, so long as "there is such

claims.

reference to him that those who read or hear the libel
(Ç 2006 Thomson/est. No Claim to Orig. U.S. Govt. Works.

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C. Humble's Motion for Summary Judgment on Its

With the limited evidence presented by Humble, the
Cour is unable to conclude that Humble has

Counterclaims and Third Party Claims a.
Infringement and Unfair Competition

established that its umegistered product names are
valid and protectable marks. Particularly as to the test articulated above, the evidence in this case is unclear

In its pleading, Humble asserts that Buying and third
part defendant Ross FN12 engaged in unfair

as to how Humble actually used its product names.
The only evidence in the record regarding these

competition under the Lanham Act, and unfair competition, including trademark infringement under state law. As discussed earlier, the threshold issue on
a claim for trademark infringement or unfair
competition is whether there exists a valid and

product names is from the Certification of James
Wickersham, which states that "as a result of its investment in the development and promotion of its website, Humble Abode also has trademark rights in

protectable mark. HUMBLE ABODE is registered as a service mark and is entitled to a presumption of validity. 15 U.S.c. 1115(a). Buying has not pointed to evidence overcomig this presumption, but argues that Humble's registration is irrelevant to the present
case because this case "involves the sale of goods,

numerous product names for its bedroom futue
including but not limited to the following trademarks
for futue items: ACCOLADE, ALABASTER, ...

(listing product names)." FNl3 Wickersham Cert. at ii
5 (incorporating by reference ir 16 of Humble's Counterclaims and Cross-Claims). Also, Humble's

not services." PI. Brf. at 22.
f241 While a service mark and a trademark are

Rule 56.1 statement, in a point undisputed by Buying,

states that "(a)t the time this suit was fied, Humble

Abode utilized various product names for the
bedroom fuitue it sells, including but not limited to

separate designations, they are similar in many ways. The purose of a trademark is to distinguish one

the following name for fuiture items: ACCOLADE,

part's goods from those made by another, and a
service mark is used to distinguish services in the

ALABASTER, (listing product names)."
Statement of Material Facts at ii 3. Of course, Wickersham stating that Humble "has trademark

same manner. In either case the marks are used to indicate the distinctive source of the goods or services. The services involved in this case involve
the online retailing of

bedroom futue. Moreover, a

mark provides protection not only for the product or service to which it is originally applied but also to
related items or services. See Boston Athletic Ass'n v. Sullvan, 867 F.2d 22. 27 (1 st Cir.1989).
Consequently, the Cour is unpersuaded by Buying's
argument with respect to the validity of Humble's

rights" in its product names does not make it so, but the certification does, at a minimum, establish that Humble used certain product names. However, nowhere does Humble provide evidence of how the product names are used, where they appeared, if and

how they were communicated to prospective
purchases, or even to what kinds of items they refer.
Without this information, the Cour is unable to

mark.

perform any analysis as to the protectability of Humble's futue names and, even more generally,
cannot conduct an analysis of Humble's claims as to
these product names. This precludes summary
judgment in favor of Humble on any of Humble's
claims with respect to these product names. The

*12 R2 Humble also claims to have trademark
rights in over 90 "unique, proprietary and arbitrary
product names." Buying argues that the marks are not

valid trademarks because they have not been
physically affxed to any goods. However, in

remainder of the Cour's discussion, therefore, wil
focus on the HUMBLE ABODE mark.

establishig common law trademark rights, the old

rule requiring physical affxation has given way to a

more open-ended approach. See 2 McCarty on
Trademarks and Unfair Competition & 16:24 (4th
ed.). Under the modern rule as set fort in

i. Buying's Use of Humble's Mark HUMBLE ABODE

Humble provides several screenshots of Buying's

Restatement (Thid) of Unfair Competition, common law trademark rights can be acquired when a mark is "actually used." Restatement ~. Such use occurs

web pages that use the mark HUBLE ABODE. For
example, a page from totalbedroom.com states:
*13 In addition to offering the lowest prices

when the mark "is displayed or otherwise made
known to prospective purchasers in the ordinary

anywhere, we have begun to educate our visitors as to how retailers like Humble Abode sell the same
product for much more under a different name. After

course of business in a manner that associates the designation with the goods, services, or business of
the user." !d.

doing a thorough evaluation of every coupon code and sale ever offered at Humbleabode.com it is clear

(Ç 2006 Thomson/est. No Claim to Orig. U.S. Govt. Works.

Case 1:06-cv-00040-SSB-TSB
--- F.Supp.2d ------ F.Supp.2d ----, 2006 WL 3000459 (D.NJ.) (Cite as: --- F.Supp.2d ----)

Document 33-2

Filed 11/02/2006

Page 14 of 18
Page 14

that the Total Bedroom price is always significantly

doing so, to identify by trademark, the competitor's

cheaper. For comparison we have listed the Humble Abode product names, to learn more or order, click the product pictue below.

goods." 4 McCarthv on Trademarks and Unfair

Competition & 25:52 (4th ed.). As noted by the Third
Circuit, "(t)he use of a competitor's trademark for

Answer at Ex. A and B. Directly below this
paragraph is a disclaimer: "Humble Abode and product names are trademarks of HumbleAbode.com
LLC. All other trademarks are the propert of the

puroses of comparative advertising is not trademark
infringement 'so long as it does not contain
misrepresentations or create a reasonable likelihood

that purchasers wil be confused as to the source,

identity, or sponsorship of the advertiser's product.' "
G.D. Searle & Co. v. Hudson Pharmaceutical Corv.,
715 F.2d 837. 841 (3d Cir.1983) (quoting SSP

respective trademark owners." Id.
Also from totalbedroom.com, as found on a page

A£ricultural. Etc. v. Orchard-Rite Ltd.. 592 F.2d
1096. 1103 (9th Cir.1979)).
*14 In fact, comparative advertising has been

providing product detail for one of their beds, is the following: "Total Bedroom has found the same bed

renamed. In an effort to clarify the market for
futue shoppers, we decided to include a

comparison to humbleabode.com who sells this as the Montana Wood and Iron Bed." Id. at Ex. C.

recognized as a useful tool for consumers in making purchasing decisions. See, e.g., August Storck K.G. v. Nabisco. Inc.. 59 F.3d 616 (1995) ("A use ofa rival's

The following appeared on buyingfurniture.com: "If
you are considering a purchase at Humble Abode (humbleabode.com) please read the below bed deal to see how to save $100's on: (listig product names) To see what these beds are called by Fashion Bed Group

mark that does not engender confsion about origin or quality is therefore permssible. The use is not just permssible in the sense that one firm is entitled to do
everything within legal bounds to undermne a rival;

it is beneficial to consumers. They learn at a glance what kind of product is for sale and how it differs

(the manufactuer) simply Price Compare Humble
Abode by clicking on this link." !d. at Ex. H.

from a known benchmark."). Indeed, the Federal
Trade Commssion encourages the use of comparative advertsing and has expressly recognized its benefits:
Comparative advertising, when trthful and

A screen shot shows that a search ru on the Google

search engine for the term "humble abode futue"
resulted in the appearance of a sponsored advertisement for totalbedroom.com. The

advertisement states: "Save on Humble Abode. Find
many of

the Humble Abode.com beds at a significant

discount." It also provides a link to totalbedroom.com. Id. at Ex. 1.

nondeceptive, is a source of important informtion to consumers and assists them in making rational purchase decisions. Comparative advertising encourages product improvement and innovation, and can lead to lower prices in the marketplace.
16 C.F.R. & 14.15(c).

Humble also provides several screen shots of
searches apparently performed on the Yahoo! search engine using various search phrases that included the words "Humble Abode." Appearing at or near the top
of the natual results list (i.e., apparently
Im In the context of a trademark infringement

claim, the comparative advertising defense raised by Buying falls under the umbrella of "nomiative fair
use." Nominative fair use occurs when (1) the alleged infringer uses the trademark holder's mark to describe the trademark holder's product, even if the goal of the accused infringer is to describe his own product; or (2) "if the only practical way to refer to somethig is
to use the trademarked term." Century 21 Real

unsponsored) are websites purportedly affliated with Buying. The summaries shown on the search engine show that the term "Humble Abode" appears on these
websites.

Estate Corvo v. Lendingtree, Inc.. 425 F.3d 21 L 214

ii. Fair Use

(3d Cir.2005). Consequently, "(i)t must be

f261 Buying argues that Humble's Lanham Act and
state law claim are barred by the affirtive defense

recogned at the outset that 'fair use' presents a fact pattern different from that of a norml infringement suit." Id. at 217.
in In Century 21 Real Estate Corp. v. Lending

of "fair use" in the form of comparative advertsing.
"In general, the law is that it is neither trademark

infringement nor unfair competition to trthfully

compare competing products in advertising, and in

Tree, Third Circuit adopted a two-part approach for nominative fair use cases. First, the plaintiff must

(Ç 2006 Thomson/West. No Claim to Orig. u.s. Govt. Works.

Case 1:06-cv-00040-SSB-TSB
--- F.Supp.2d ----- F.Supp.2d ----, 2006 WL 3000459 (D.NJ.)
(Cite as: --- F.Supp.2d -