Trademarks

Arizona Republic:  “A Sanskrit word meaning ‘gracious gift’ or ‘clarity’ has resulted in anything but for two Surprise business entities.  A doctor who recently opened his first practice, Prasada Pediatrics, is involved in a trademark-infringement dispute with Westcor, the developer of the master-planned community of Prasada.  Dr. Brian Lawrence Young, whose wife’s mother is Buddhist, said he chose the name for its Sanskrit meanings.  ‘We live in Surprise, so we know that there’s a significant need for pediatrics in Surprise,’ said Young, who moved to the Valley from New Jersey in 2005.”

Is this a case of the big company with a deep pocket using its ability to spend money on legal fees intimidating the little guy?  Consider what Harvard University’s Berkman Center for Internet & Society says about  the topic “What Constitutes Trademark Infringement:

If a party owns the rights to a particular trademark, that party can sue subsequent parties for trademark infringement. 15 U.S.C.  Sections 114, 1125.  The standard is “likelihood of confusion.” To be more specific, the use of a trademark in connection with the sale of a good constitutes infringement if it is likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods. In deciding whether consumers are likely to be confused, the courts will typically look to a number of factors, including: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; (7) the defendant’s intent. Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961).

So, for example, the use of an identical mark on the same product would clearly constitute infringement. If I manufacture and sell computers using the mark “Apple,” my use of that mark will likely cause confusion among consumers, since they may be misled into thinking that the computers are made by Apple Computer, Inc. Using a very similar mark on the same product may also give rise to a claim of infringement, if the marks are close enough in sound, appearance, or meaning so as to cause confusion. So, for example, “Applet” computers may be off-limits; perhaps also “Apricot.” On the other end of the spectrum, using the same term on a completely unrelated product will not likely give rise to an infringement claim. Thus, Apple Computer and Apple Records can peacefully co-exist, since consumers are not likely to think that the computers are being made by the record company, or vice versa.

A search of the U.S. Patent & Trademark Office’s database shows that an Arizona limited liability company called Westcor/Surprise, LLC, has obtained two federally registered trademarks.  They are:

1.  Registration Number:  3684454.  For Prasada as a standard character mark in the following classes: (1) IC 036. US 100 101 102. G & S: Shopping center services, namely, leasing of shopping centers; real estate leasing, real estate management. FIRST USE: 20050600. FIRST USE IN COMMERCE: 20050600, and (2) IC 037. US 100 103 106. G & S: Real estate development and site selection; construction services, namely, planning and building, construction consulting for commercial, residential, and medical facilities. FIRST USE: 20050600. FIRST USE IN COMMERCE: 2005060.

2.  Registration Number:  3138577.  For Prasada as a words, letters and/or numbers in stylized form in class IC 036. US 100 101 102. G & S: Shopping center services, namely, rental and management of shopping center space. FIRST USE: 20050518. FIRST USE IN COMMERCE: 20050518.

I highlighted the classes for Westcor/Surprise’s two registered marks because its trademark/service mark rights extend to these areas.  The registrations are for International Class 36 (real estate affairs) and 37 (building construction; repair; installation services).  Note that Westcor/Surprise did not register Prasada in International Class 44, which is for medical services.  Hmm!  Could it be that Westcor/Surprise did not register its trademark for Prasada in IC 44 because it’s use of Prasada does not involve medical services?

Westcor/Surprise has not sought to register a federal trademark for Prasada as a medical practice or doctors’ office, which is nothing like shopping center services or real estate development.  Do you think there is a likelihood of confusion between a doctor’s medical practice called “Prasada Pediatrics” and a huge shopping mall and master-plannded community many miles away called “Prasada”?  Do you think anybody would go to Prasada Pediatrics because they intended to shop at the Prasada Pediatrics mall? I’m having a hard time finding a likelihood of confusion unless perhaps it is Westcor/Surprise, LLC, that is confused because it cannot tell the difference between a shopping mall and a children’s doctor’s office.