SAN FRANCISCO — A financial services company claiming that its trademarks have been used as a title for a webcast seminar and in promotion materials has suffered a loss in court.
U.S. Circuit Judge Milan Smith Jr., on the bench of the U.S. Court of Appeals for the Ninth Circuit, issued a 25-page ruling on Jan. 15 affirming the U.S. District Court for the Eastern District of California's decision in the lawsuit filed by Applied Underwriters Inc. against Larry J. Lichtenegger, J. Dale Debber, and Providence Publications.
The judges affirmed the decision that Applied Underwriters had failed to state a claim in its case, but considered that the lower court "abused its discretion" by not allowing plaintiffs to amend their complaint through an order.
Applied Underwriters sued Lichtenegger, Debber, and Providence Publications on claims of infringing trademark and unfair competition in materials for promoting financial resources for employers nationwide.
"Beginning in November 2015, Defendants began offering a seminar (both online and on DVD) that 'uses the APPLIED UNDERWRITERS and EQUITYCOMP marks in the title of the webcast,'" the ruling said.
Allegedly, "Defendants used these marks 'without Applied Underwriters’ authority or permission and in reckless disregard of [its] federal trademark registrations and its rights,'" and "Defendants 'specifically and intentionally target[ed] their marketing and advertising…to independent brokers and the business organizations that they serve who use Plaintiff’s services.'”
Applied Underwriters sued the defendants under the Lantham Act and state and federal unfair competition laws.
In his ruling, Judge Smith stated that the "defendants’ use of plaintiff’s trademarks in the title of a webcast seminar and in promotional materials was a nominative fair use because plaintiff’s service was not readily identifiable without use of the trademarks, defendants used only so much of the trademarks as was reasonably necessary, and use of the trademarks did not suggest sponsorship or endorsement."
U.S. Court of Appeals for the Ninth Circuit Case number 17-16815