IP Law Bulletin

Southgate brought suit against a number of defendants for trademark infringement shortly after his mark was registered. But in Southgate v. Soundspark, Inc., No. 14-CV-13861-ADB, 2016 WL 1268253 (D. Mass. Mar. 31, 2016), the District of Massachusetts granted the various defendants’ motions to dismiss his complaint.

Southgate’s allegations mostly related to the formation of a start-up called SoundSpark, Inc. According to the complaint, that company traced its origins to a late-2013 meeting at MIT between three of the defendants, and two of them incorporated SoundSpark in April 2014.

Southgate alleged that SoundSpark, Inc.’s two founders reached out to him in August 2014, and that he spoke with them by phone. They were purportedly interested in the “Sound Spark Studios” mark, and Southgate claimed that he also told them he intended to register a related mark for “Spark It.”

After that conversation, the defendants filed an application for “SparkIt” and replaced “SoundSpark” with “SparkIt” on their websites. But two days later, they filed another application for “TapTape,” which they then swapped for “SparkIt” online.

Southgate’s complaint nonetheless brought allegations of trademark infringement as well as dilution of his “Sound Spark Studios” and “Spark It” marks. Most of the court’s opinion examines the merits of his infringement allegations.

The elements of trademark infringement are (1) the claimant’s use and ownership of the mark, (2) defendant’s unauthorized use of the mark, and (3) likelihood of consumer confusion. With respect to the “Spark It” mark, the court first explained that Southgate’s claims did not survive even the first step; he alleged that he planned to use that mark, but not that he actually used it.

As for “Sound Spark Studios,” the court noted that Southgate registered a design mark, formed the company, and maintained a website, so it held that he successfully pled the first element. Considering the second element, the court disposed of allegations directed at some defendants because their marks were “not at all similar” to the “Sound Spark Studios” mark.

But the court reached the third element, consumer confusion, with respect to the SoundSpark, Inc. founders. After listing the eight elements of the confusion analysis—which include, for example, the marks’ similarity, the connection between the parties’ trade channels and advertising, evidence of actual confusion, defendants’ intent, and the strength of the plaintiff’s mark—the court dismissed Southgate’s claims.

Southgate did not sufficiently plead how his company was similar to and competed with defendants’; the court said that the complaint offered little evidence of similarity aside from the fact that “both companies are involved in the music industry.” The court also explained that the complaint said nothing of the companies’ respective “channels of trade, advertising, or consumer base.” And the defendants’ apparent good faith in rebranding to “TapTape” mattered, too.

The court found that the “Sound Spark Studios” mark was weak; it had not been in use for long when the suit was filed, and it was promoted only on Southgate’s website. Further, there was no evidence of any actual consumer confusion.

Dismissing the infringement claims, the court reiterated the analysis summarized above and explained that the marks’ dissimilarity also suggested that confusion was impossible.

The court then dismissed Southgate’s additional claims of trademark dilution because the “Sound Spark Studios” and “Spark It” marks were not famous enough.

Ultimately, this result is a reminder that establishing trademark infringement—even in initial pleadings—demands more than mere registration and use.