Sunearth, Inc. v. Sun Earth Solar Power Co.

A likelihood of confusion was found when goods were of the same type and similar channels were used.

Plaintiff SunEarth, Inc. (“SunEarth, Inc.”) manufactures and sells solar thermal collectors and related components. Defendant Sun-Earth Solar Power Co., Ltd. (“SESP”), located in Ningbo, China, branded its photovoltaic panels with the Chinese words for "Sun Earth." In January 2010, Defendant NBSolar USA, Inc. (“NBSolar”) was formed as a California corporation affiliated with SESP. On a few occasions, SunEarth, Inc. sold products under the SunEarth, Inc. trade name, although it did not use the SunEarth trademark. On October 2, 2007, NBSolar received notice of allowance for the Sun Earth trademark with the warning that it must use the mark in commerce and file a Statement of Use before the mark would be registered. NBSolar never responded to the notice of allowance and did not file a statement of use. At a trade event, a NBSolar representative noticed that SunEarth Inc.’s company name was the same as the name on NBSolar’s mark and visited SunEarth Inc.’s booth. The NBSolar representative exchanged business cards with a representative from SunEarth, Inc. SunEarth, Inc. filed for trademark infringement. The test of trademark infringement under state, federal, and common law is whether there will be a likelihood of confusion. To prevail on a claim of trademark infringement, a plaintiff must prove: (1) that it has a protectable ownership interest in the mark and (2) that the defendant's use of the mark is likely to cause consumer confusion. While NBSolar later registered their Sun-Earth mark in 2008, and were therefore entitled to a presumption of ownership for this date, SunEarth, Inc. established legally sufficient national market penetration over their trade name and mark for nearly thirty years prior to 2007. T. SunEarth Inc. introduced evidence that they used the term "SunEarth" as a trademark, trade name, and service mark in the United States since 1978. NBSolar conceded that SunEarth, Inc. had common law prior user rights in several states of the United States to its SunEarth mark. Accordingly, the court found SunEarth, Inc. to have have proven a protectable ownership interest in the trade name and mark senior to that of NBSolar’s. The court further found a likelihood of confusion and a close proximity in the types of goods utilizing the mark, as well as similar channels through which the products were advertised. Accordingly, the court found for Sun Earth and ENTERED a permanent injunction against SESP.