Intellectual Property Law

Western District Finds No Likelihood of Confusion between HELIX Trademarks

By Michael Atkins

In December 2007, Seattle’s RealNetworks, Inc., filed suit in the Western District against QSA Toolworks, LLC, seeking a declaration that its HELIX and HELIX and Design trademarks used in connection with digital media software do not infringe QSA Toolworks’ HELIX marks used in connection with relational database technology.

The parties cross-moved for summary judgment. A central issue was whether the parties’ products sold under their marks was similar. On Aug. 14, Judge Marsha Pechman clarified that the appropriate Sleekcraft factor is whether the products are “related” or “complementary,” which she found the parties’ offerings are not.

“The parties spend a good deal of time arguing whether their products perform ‘similar’ or ‘identical’ functions. RN argues that the ‘streaming media’ functions of its Helix software are entirely distinct from the ‘relational database management’ functions of QSA’s Helix applications; QSA argues that its product is used in streaming media configurations, that its Helix products have expanded beyond relational database management, and that RN’s Helix products have expanded beyond simple streaming media uses.

“But the Sleekcraft opinion does not refer to ‘identical’ or even ‘similar’ uses. The Sleekcraft court addressed this concern to whether the products are ‘related’ or ‘complementary,’ observing that ‘[f]or related goods, the danger presented is that the public will mistakenly assume there is an association between the producers of the related goods, though no such association exists … Although these product lines are non-competing, they are extremely close in use and function.’ The Court finds the Ninth Circuit’s ruling in M2 Software, Inc.v. Madacy Entertainment, 421 F.3d 1073 (C.A.9 (Cal.), 2005) instructive. In a trademark case where the litigants both distributed identical products (music and CDs) under the same name, the court found that ‘[t]herefore this [proximity] factor weighs in M2 Software’s favor, but only slightly because the genres of the music CDs are very significantly different.’ If the Ninth Circuit was willing to find only a ‘slight’ proximity factor between two manufacturers of a generically-identical product (CDs, downloadable music), this Court has little difficulty finding in RN’s favor on this factor.

“When fundamental functionality is distinct, the case supports a finding of ‘no confusion.’ QSA’s Helix software is used for creating applications which manage and modify information in relational databases, such as custom databases for tracking appointments and billing. In contrast, RN Helix products are utilized for the delivery of streaming media (audio and video), for media encoding and decoding in a variety of formats and ‘for the related efficient management of content delivery and network bandwidth for streaming over the Internet.’”

This led the court to grant RealNetworks’ motion for summary judgment in favor of a finding of no likelihood of confusion.

“With the exception of the “similarity of marks” factor (which is a ‘no decision,’ as opposed to a finding in QSA’s favor), the Court finds as a matter of law that the Sleekcraft factors overwhelming favor Plaintiff’s position of ‘no likelihood of confusion.’ On this basis, Plaintiff is entitled to a finding on summary judgment that there is no likelihood of confusion between its use of the Helix mark and that of QSA.”

The case cite is RealNetworks, Inc. v. QSA Toolworks, LLC, 2009 WL 2512407, No. 07-1959 (Aug. 14, 2009) (Pechman, J.).

Full post as published by Seattle Trademark Lawyer on August 31, 2009 (boomark / email).