- Court: Intellectual Property
- Area(s) of Law: Trademarks
- Date Filed: 12-21-2011
- Case #: 2:10-cv-18
- Judge(s)/Court Below: Marbley
The Scooter Store, Inc. (“TSS”), was a Nevada corporation whose principal place of business was Comal County, Texas. SpinLife.com LLC (“SpinLife”), was an Ohio corporation with its principal place of business in Columbus, Ohio. In 2000, TSS applied for a trademark of "The Scooter Store" for use in insurance claims processing and retail sales. The trademark was granted for a composite trademark of "The Scooter Store.” TSS alleged that SpinLife purchased the phrase "the scooter store" and other combinations using those words from Google AdWords as part of a plan to confuse TSS's customers. SpinLife claimed that Adword purchases, even of another's registered trademarks, were not actionable for infringement, and therefore its purchases of Adwords for phrases containing "scooter" and "store" were simply not actionable. SpinLife's fundamental argument was that the phrases "scooter store," "my scooter store," and the other combinations were all generic terms, and therefore were not entitled to any trademark protection. The test for genericness is whether the public perceives the term primarily as the designation of the article. Generic terms, have no trademark significance and therefore are not entitled to protection. Thus, if a term is found to be generic, a court need not even reach the issue of the likelihood of confusion for no trademark protection exists. The Court found that the disputed terms were generic, they were not protectable and could not infringe TSS's "The Scooter Store" mark based on creating consumer confusion. TSS's affirmative claims for trademark infringement were DISMISSED.