Unfortunately, the decision doesn’t contribute a lot to the jurisprudence. Discussion of the first issue is very brief; a few more facts explaining the defendant’s theory would have been helpful in understanding the court’s conclusion. Defendant MMI alleged that ConsumerInfo wasn’t the owner of its PLUS SCORE mark because the mark is promoted under the “Experian” brand name:
My search found uses of the mark on pages that on first blush appear to be different sources with different look and feel, although on closer inspection they all bear the Experian mark:
The court relied on Section 5 of the Lanham Act to find for ConsumerInfo. Section 5 says “Where a registered mark … is or may be used legitimately by related companies, such use shall inure to the benefit of the registrant …, and such use shall not affect the validity of such mark or of its registration…. If first use of a mark by a person is controlled by the registrant … of the mark with respect to the nature and quality of the goods or services, such first use shall inure to the benefit of the registrant . . . .” Note that Section 5 doesn’t require that the parent be the registrant in a parent-subsidiary relationship, only that there be control by the registrant. The court stated,
Here, it is undisputed that ConsumerInfo is a wholly owned subsidiary of Experian Holdings, Inc., and that ConsumerInfo is also known as Experian Consumer Direct. (Def.’s SGI ¶ 2.) It is also undisputed that ConsumerInfo, as the registrant of the PLUS SCORE mark, controls the nature and quality of goods sold under the PLUS SCORE mark. (Def.’s SGI ¶¶ 5-9 (“The ConsumerInfo employees on the team specified the nature and quality of the scoring model…. [I]n its PLUS Score product, ConsumerInfo provides the consumer the three digit number in combination with analysis and other educational information supplied by ConsumerInfo that helps the consumer understand their credit score.”).) Accordingly, ConsumerInfo is entitled to the presumption of validity [because it owned a federal registration].
Without proof that the mark isn’t actually controlled by ConsumerInfo, or that it has lost its significance as a mark, it’s validly owned by ConsumerInfo.
Second, MMI alleged that it was the senior user of its mark, MY SCORE+. MMI claimed it had distributed brochures with the mark, advertised in the yellow pages and on its website, and taught educational sessions under the mark. Despite the fact that date of first use is a factual inquiry based on the totality of the circumstances, the court managed to find ways to discount all of MMI’s evidence and hold that no fact finder could find that MMI was the senior user of its mark.
Since likelihood of confusion was admitted, summary judgment on the Lanham Act and common law trademark infringement claims was decided in favor of ConsumerInfo.
Consumerinfo.com, Inc. v. Money Mgmt. Intl, Inc., CV 07-04275 SJO (Ex), 2008 U.S. Dist. LEXIS 79303 (Sept. 2., 2008).
© 2008 Pamela Chestek
