• Color Me Puzzled

    by  • April 22, 2010 • trademark

    It’s a routine trademark infringement suit over both parties’ use of the mark VANTAGE. Plaintiff Vantage, Inc. is the owner of a pending application for VANTAGE, which has been opposed by the defendant Vantage Travel Service, Inc., the opposition now stayed. Defendant filed a motion for summary judgment on a § 43(a) claim, a state law unfair trade practices claim, and for common law trademark infringement.

    The court decides that all the claims rest on likelihood of confusion and then finds that there is indeed a question of fact on confusion (surprise, surprise). At the end of the case is this somewhat surprising admission, though – the analysis in its entirety:

    Common Law Trademark Infringement Claim

    Although ownership is not required to assert a claim under 15 U.S .C. § 1125(a), ownership is required to “have standing to seek relief for common law trademark infringement.” [citations omitted.] Vantage concedes that it is not the owner of the VANTAGE Mark, but is a former licensee. Vicario [owner of Vantage Inc.], a nonparty, is the owner of the VANTAGE Mark. Based on the foregoing, Vantage Travel is entitled to summary judgment on Vantage’s common law trademark infringement claim.

    Putting aside the puzzling statement that Vantage, Inc. is a former licensee of its apparently current business owner, this is the death knell for the application. Only an owner can file a trademark application.

    Vantage, Inc. v. Vantage Travel Service, Inc., No. 6:08-2765-HMH (S.C. April 8, 2010).

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