Intellectual Property Law

Ninth Circuit Affirms Western District's Finding that "Vericheck" is Suggestive

By Michael Atkins

A while back, the Western District in Lahoti v. Vericheck, Inc., found the VERICHECK trademark is suggestive when used in connection with check verification services. In doing so, it concluded that David Lahoti acted in bad faith when he registered the vericheck.com domain name.

In 2009, Mr. Lahoti appealed. The Ninth Circuit affirmed the bad faith finding. With regard to the classification of VERICHECK, it found: “[w]hile the district court perhaps could have relied exclusively on the registration of the Arizona Mark [also for VERICHECK for check verification services], it did not do so,” but instead “improperly required that the Mark describe all of [respondent] Vericheck’s services, examined the Mark in the abstract, and concluded that it could not analyze the Mark’s component parts.” Therefore, it vacated the district court’s judgment and remanded.

On remand, the Western District applied the Ninth Circuit’s direction in amended findings of fact and conclusions of law. It again concluded that VERICHECK is suggestive and, therefore, is entitled to protection as a trademark without a showing of secondary meaning.

Mr. Lahoti again appealed, arguing the district court again failed to analyze the VERICHECK mark in its industry context.

On Feb. 16, the Ninth Circuit affirmed. It found: “the district court indisputably recited the relevant legal principles that we set out. The district court then went on to find that, ‘[w]hen viewed in the context of Vericheck’s services, whether in whole or in part, including Vericheck’s check verification services, the VERICHECK mark does not immediately convey information about the nature of Vericheck’s services.’ The district court explained that, ‘in reaching [its] conclusion,’ it ‘considered the component parts of the VERICHECK mark ‘as a preliminary step on the way to an ultimate determination of the probable consumer reaction to the composite as a whole.” Thus, the district court conducted its analysis as instructed.”

STL background on the long-running case here, here, here and here.

The case cite is Lahoti v. Vericheck, Inc., __ F.3d. __, 2011 WL 540541, No. 10-35388 (9th Cir.) (Jan. 13, 2011).

Full post as published by Seattle Trademark Lawyer on February 20, 2011 (boomark / email).