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Designer Skin LLC v. S & L Vitamins, Inc., et al.
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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Public Service Company of New Mexico v. Nexus Energy Software, Inc.

36 F. Supp. 2d 436 (D. Mass., February 24, 1999)

Plaintiff and defendant each operate web sites which supply consumers with information concerning energy services. Plaintiff, a utility company, obtained federal service mark registration for its mark "Energy Place." Plaintiff uses this mark in connection with an Internet site at which, among other things, plaintiff provides information services regarding the most efficient and cost effective use of energy resources. After plaintiff commenced operation of this web site, defendant registered the domain name "" at which it, too, operates a web site providing consumers various services to analyze their energy needs. Defendant calls its web site the "eNERGY place."

Plaintiff brought suit, claiming that defendant's activities infringed plaintiff's mark. Finding plaintiff likely to prevail on this claim, the court enjoined defendant from continuing to use the "energy place" mark in either defendant's domain name or web site.

Defendant argued that the requested relief should be denied on the ground that plaintiff's "energy place" mark was descriptive and therefore not entitled to trademark protection. According to the court "a term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods."

The court rejected defendant's argument, finding that "energy place" was suggestive, not descriptive, therefore entitled to protection. Said the court:

Although the term "Energy Place" suggests that it is a place related to energy, it does not convey an immediate idea of the ingredients, qualities or characteristics of the services [plaintiff] offers [which include] providing information services regarding the most efficient and cost-effective use of energy resources ... Moreover, competitors are left with a variety of terms to describe their competing services, one example being energy information services. Consequently the Court finds that the term "Energy Place" is not "merely descriptive" and that the trademark is valid.

Finding plaintiff's mark entitled to protection, the court concluded that defendant's use was likely to confuse the public, and therefor infringe plaintiff's mark. In reaching this determination, the court relied on the virtual identity of the appearance of the parties' respective marks, and the fact that both parties offer consumers information relating to energy services on the Internet. The court accordingly enjoined defendant from continuing its use of the mark, either in its domain name or on its web site.

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