Intellectual Property Law

Trademark Owner Has Standing to Sue Despite Noncompeting Goods

By Michael Atkins

On Nov. 12, the Ninth Circuit handed down a reminder that a trademark registrant has standing to sue for infringement even when the parties’ goods do not compete.

In doing so, it vacated the Central District of California’s summary judgment dismissal of plaintiff’s trademark claims in Halicki Films, LLC v. Sanderson Sales and Marketing concerning trademark rights stemming from the motion picture Gone in 60 Seconds.

Long story short, the district court threw out the trademark claim to GONE IN 60 SECONDS on standing grounds because the plaintiff’s trademark registrations were for toy cars, toy model car kits, and baseball caps, whereas the defendant’s use of the mark was in connection with actual cars. (“Because Plaintiffs are not the registered owner of ‘Gone in 60 Seconds’ for vehicles or automobiles, Plaintiffs may not claim standing in this instance as a registrant.”)

The Ninth Circuit commented: “This conclusion confuses an analysis of the merits of Halicki’s infringement claim with an analysis of whether she has standing to bring these claims. To establish standing under the Lanham Act, a plaintiff need only demonstrate that she is the registered owner of a mark for any class of products, even one that does not compete directly with the defendant’s products. The question of whether the products on which the allegedly infringing mark appears are sufficiently related to goods sold by the plaintiff such that the defendant’s actions qualify as infringement is, by contrast, a merits question.”

The court concluded: “In this case, it is undisputed that Halicki is a registered owner of the ‘Gone in 60 Seconds’ mark for ‘toy model cars and toy model car kits’ and ‘baseball caps.’ She therefore has standing under the Lanham Act to bring an infringement claim against others allegedly using the mark in a proscribed manner.”

Whether plaintiff can prove infringement — that consumers are likely to be confused as to the source of defendant’s cars with the source plaintiff’s toy cars — remains to be seen. However, plaintiff will get a chance to put on its case.

The case cite is Halicki Films, LLC v. Sanderson Sales and Marketing, No. 06-55806 and No. 05-55807 (9th Cir. Nov. 12, 2008).

Full post as published by Seattle Trademark Lawyer on November 19, 2008 (boomark / email).