Case 1:13-cv-01215-TSC Document 239 Filed 03/31/22 Page 37 of 47
counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion.’” ASTM, 896 F.3d at 455–56 (quoting 15 U.S.C. § 1114(1)(a)). “This inquiry boils down to two questions: (1) does ASTM own ‘a valid mark entitled to protection’ and (2) is [Defendant’s] use of it … likely to cause confusion.’” Id. (quoting Gruner + Jahr USA Publ’g v. Meredith Corp., 991 F.2d 1072, 1075 (2d Cir. 1993)).
The court previously held that there was no genuine dispute on the factual issue of whether consumer confusion was likely. Specifically, the evidence showed that Defendant intentionally created copies meant to appear identical to Plaintiffs’ versions, including the use of Plaintiffs’ word and logo marks. And Defendant’s “disclaimers” were inadequate mitigation against the likelihood of confusion because they did “not mention Defendant’s creation of the reproductions, Plaintiffs’ lack of association or authorization, or that they are even reproductions or transcriptions,” and therefore could “hardly be called disclaimers at all.” ASTM, 2017 WL 473822, at *23.
Defendant did not contest either of these holdings on appeal in ASTM I, nor does it contest them now. Instead, Defendant argues that its use of ASTM’s trademarks qualifies as “nominative” fair use permitted under the Lanham Act. See Def.’s 2d MSJ at 30–37.
Nominative fair use “occurs when ‘the defendant uses the plaintiff’s trademark to identify the plaintiff’s own goods and makes it clear to consumers that the plaintiff, not the defendant, is the source of the trademarked product or service.’” ASTM, 896 F.3d at 456 (quoting Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 154 (4th Cir. 2012) (cleaned up)); accord Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211, 220 (3d Cir. 2005). To qualify as nominative fair use, “[1] the product or service in question must be one not readily identifiable
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