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Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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CD Solutions, Inc. v. John Cleven Tooker, Commercial Printing Co. and CDS Networks, Inc.

15 F.Supp.2d 986, Civil No. 97-793HA (D. Or., April 22, 1998)

Plaintiff CD Solutions, which manufactures and sells CD-ROM compact discs, operates a website at the domain "CDS.com" to aid its marketing efforts. Defendants Commercial Printing Co. and CDS Networks, Inc. own the federal trademark in "CDS" which stands for "Commercial Documentation Services." Trademark registration was obtained for a business engaged in desktop publishing and printing. Defendants contended that plaintiff's use of their trademark in this fashion constituted trademark infringement. Plaintiff disagreed. The court sided with plaintiff, and held that plaintiff's use of defendants' "CDS" mark in its domain name did not constitute trademark infringement.

The Court's ruling hinged on its determination that a generic mark is not entitled to trademark protection when used to market the class of goods it describes. Said the court:

When defendants obtained their trademark, they did no CD-ROM business. The term "CDs" (not "CDS") is generic, and a holder of a trademark must be denied protection if the mark becomes generic and is an expression that does not relate exclusively to a trademark owner's property. New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302, 306 (9th Cir. 1992).

The Court concludes that defendants cannot now expand their trademark rights to generic descriptions existing in our everyday language. Whereas "CDS" are initials of defendants' companies, defendants' registration of the trademark in 1988 described a business pertaining to "desktop publishing and printing. "Defendants now seek to expand the scope of this mark's protection to preclude the use of "CDS" in reference to compact disc products and services, and this renders the mark invalid as being generic. Accordingly, plaintiff's motion for summary judgment is granted.

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