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Given the state of the economy, businesses have placed a greater emphasis on marketing in an attempt to generate business relationships. Hosting or sponsoring speaking engagements throughout the community has become a popular marketing tool. Some seminars held over the noon hour provide lunch, and are often advertised as "Lunch and Learns".
Unfortunately, businesses using the term "Lunch and Learn" may find themselves buying not only lunch for their attendees, but also a ticket to a trademark infringement lawsuit.
How could this happen? Imagine, as a hypothetical, that ABC Marketing Co. ("ABC") decides to host a series of seminars directed to methods for attracting clients to a small business. ABC advertises the seminars in the local business journal as a "LUNCH AND LEARN" and sends e-mails to current firm clients and contacts about the seminars. Additionally, ABC advertises the upcoming seminars on its website and in local newspapers.
However, ABC does not realize that "Lunch 'N Learn®" is a registered service mark owned by Employee Development Services, Inc. ("EDSI") for "education services, namely, conducting a series of interactive workshops and seminars on business operations and related topics" (U.S. Registration No. 2,204,048). In the registration, EDSI claims it first began using the mark for such services since at least November 1, 1997, and since at least November 7, 1997, in interstate commerce. Accordingly, EDSI has acquired federal trademark rights to use of the mark.*
What types of trademark protection are available?
While EDSI has a federal trademark, trademark rights exist on varying levels, including federal, state, and common law, with federal rights extending across the United States, state rights extending throughout a state, and common law rights extending to the geographic area in which an entity is using a mark in conjunction with goods or services. These rights can exist in parallel. For instance, Company A may have a federally registered mark (federal rights) but, if Company B has been using the same mark for the same goods/services in a certain geographic area (thereby acquiring common law rights in that geographic area) prior to Company A's use of the mark in the same geographic area or filing date of its application, Company B may prevent Company A from using the mark in Company B's geographic territory by asserting its superior common law rights. However, Company A may prevent Company B from expanding its use of the mark beyond the geographic territory in which it was using the mark prior to Company A’s application filing date.
INFRINGEMENT OF A FEDERAL MARK - THE LANHAM ACT
The Lanham Act, 15 USC § 1114, is the law that governs trademark protection federally, and sets forth the standard in determining whether use of a mark infringes the trademark rights of another as being a likelihood of confusion. This is important, as the standard does not require actual confusion, but rather a likelihood of confusion.
Likelihood of confusion determinations vary slightly among federal circuits around the country. The 11th Circuit, which includes Alabama, Florida, and Georgia, uses seven factors for determining the likelihood of confusion: (1) the type of mark; (2) the similarity of the two marks; (3) the similarity of the goods; (4) the identity of customers and similarity of retail outlets, sometimes called the similarity of trade channels; (5) the similarity of advertising; (6) the intent, i.e., good or bad faith, of the alleged infringer; and (7) evidence of actual confusion, if any.
COULD ABC BE INFRINGING "LUNCH 'N LEARN"?
How does one determine whether ABC is infringing the service mark rights of EDSI based upon its use of the phrase "Lunch and Learn"? Assuming that EDSI’s mark has priority, it would have to be shown that the defendant’s mark is likely to cause consumer confusion.
What is the "type of mark"?
Marks are categorized along a continuum ranging from highly distinctive to generic. In descending order of protection afforded, these are:
- Fanciful (comprising terms that have been invented solely for the purpose of functioning as a trademark, e.g., EXXON);
- Arbitrary (comprising words that are common in linguistic use but do not suggest the goods/services with which the mark is used in conjunction, e.g., APPLE for computers);
- Suggestive (comprising words that when applied to the goods/services require imagination, thought, or perception to reach a conclusion as to the nature of the goods/services, e.g., SNO-RAKE for a snow-removal hand tool);
- Descriptive (comprising words that describe an ingredient, quality, characteristic, function, feature, purpose, or use of the goods/services, e.g., APPLE PIE for potpourri); and
- Generic (comprising words that the relevant purchasing public understands primarily as the common or class name for the goods/services, e.g., LAWYERS.COM for an online interactive database featuring information exchange in the fields of law, legal news, and legal services).
Generic marks are afforded no federal, state, or common law protection. In this example, the parties would likely argue the character of the mark LUNCH ‘N LEARN® as being suggestive or descriptive.
What is similarity of marks?
In this case, ABC is using the mark LUNCH AND LEARN while the registered mark is LUNCH ‘N LEARN®. Although the marks are not identical, they are, in fact, phonetically equivalent. Therefore, it would seem that the similarity of the marks is high.
What is the similarity of the services?
In this case, ABC is using the mark in conjunction with a series of seminars relating to attracting clients to a small business. EDSI's registered mark is for "education services, namely, conducting a series of interactive workshops and seminars on business operations and related topics". Therefore, it would appear that the similarity of the services is high.
What is the similarity of trade channels?
In this case, ABC’s and EDSI’s trade channels are generally directed to the public at large and, more specifically, to small business owners or those intending to become small business owners. Therefore, the trade channels appear to be similar.
What is the similarity of advertising?
In this case, ABC is advertising its services in local marketing journals, via emails, on its website, and in local newspapers. Although EDSI may not advertise its services in local marketing journals and to ABC's customers and contacts via emails, it may advertise its services on its website and in local newspapers. Accordingly, a more detailed investigation as to how EDSI is advertising its services would be required.
What is ABC’s intent in using the mark?
If ABC had knowledge of EDSI’s registered mark and intended to capitalize on the goodwill EDSI has established in the mark, then this would strengthen a claim for trademark infringement. In this case, however, ABC had no knowledge of the mark and used it in good faith. Accordingly, the intent factor is low.
Is there evidence of actual confusion?
In this case, no actual confusion has occurred wherein ABC's consumers mistakenly believed ABC's seminar series was actually going to be presented (or sponsored by) EDSI.
In this example, weighing all the factors points towards a strong likelihood of confusion. Specifically, this example shows how a commonly used term can be protected by a trademark. Therefore, companies that use terms like "LUNCH AND LEARN" should proceed with caution in the event that trademark rights to a similar term are held by another entity.
*The firm does not represent Employee Development Systems, Inc.
