Intellectual Property Law

Western District Stays But Does Not Dismiss 1-800-JUSTICE Infringement Case

By Michael Atkins

Plaintiff Just Enterprises, Inc., owns a federal registration for 1-800-JUSTICE for “legal referral services.” Defendant Phillips & Webster, PLLC, is a Woodinville, Wash.-based personal injury law firm. Just Enterprises alleges in its complaint filed in the Western District of Washington that P&W has licensed and currently uses 888-JUSTICE in connection with its law firm in a manner that is likely to cause confusion with Just Enterprises’ mark. P&W brought a motion to dismiss on grounds of fair use, among other defenses.

On Feb. 7, Judge Robert Lasnik denied P&W’s motion, but stayed the action based on a prior similar pending action in the Western District of Missouri.

The court’s opinion provides a nice discussion of the fair use defense with regard to telephone number trademarks:

“Defendant maintains that its use of 1-888-JUSTICE in its television advertisements is a fair use of plaintiff’s substantially similar 1-800-JUSTICE mark. The fair use doctrine is a defense to a trademark infringement claim. It is designed to protect the right of commercial competitors to use common, ordinary terms to describe their own goods and services, regardless of whether a trademark owner has chosen the term as a mark. It is clear that plaintiff cannot preclude competitors from using the word ‘justice,’ and plaintiff concedes as much in its response memorandum. But plaintiff argues that because its mark is 1-800-JUSTICE, a combination of numbers, symbols, and letters, and not just the word ‘justice,’ it has enforceable rights in the mark such that defendant’s use of a substantially similar phone number violates the Lanham Act. At least one court has found that the addition of a telephone prefix to a generic term does not give rise to an enforceable mark. 800 Spirits Inc. v. Liquor by Wire, Inc., 14 F.Supp.2d 675, 680-81 (D.N.J. 1998). Because defendant has not directly challenged the validity/enforceability of plaintiff’s mark, the Court will assume for purposes of this motion that plaintiff’s mark is valid and that the phone number defendant uses is the legal equivalent of plaintiff’s mark.

“The Court will also assume that 1-888-JUSTICE describes the services offered by defendant and therefore satisfies the descriptive element of the fair use doctrine. Nevertheless, dismissal pursuant to Rule 12(b)(6) is not appropriate. The fair use defense does not apply if defendant’s use of plaintiff’s mark is likely to cause consumer confusion as to the origin of the goods or services offered. In its complaint, plaintiff alleges that ‘defendant’s use of (888) JUSTICE and similar infringing phrases has caused actual confusion, mistake and deception.’ Defendant disputes this allegation and argues that no reasonable consumer viewing defendant’s television advertisements could be confused as to the origin of the services offered.

“In the context of this motion to dismiss, the Court must take the allegations of the complaint as true unless contradicted by the integral documents. This is not a case where a document considered by the Court flatly contradicts an allegation in the complaint. … Because plaintiff’s complaint adequately alleges consumer confusion, the motion to dismiss the Lanham Act is denied.”

The case cite is Just Enterprises, Inc. v. Phillips & Webster, PLLC, No. 07-1622 (W.D. Wash. Feb. 7, 2008) (Lasnik, J.).

Full post as published by Seattle Trademark Lawyer on February 09, 2008 (boomark / email).