Lambert Corp. v. LBJC Inc.

To prevail on a claim for trademark infringement under the Lanham Act, Section 43(a), a plaintiff must prove: (1) ownership of a valid trademark; (2) use of the mark without its consent; and (3) that such use is likely to cause confusion. Even without a valid trademark registration, a trademark infringement plaintiff may still demonstrate superior rights to a trademark by establishing that it was the first user of the mark in commerce, however, such prior use must be “continuous,” and not merely “transitory.”

Opinion (Snyder): Plaintiff Lambert Corporation (“Lambert”) is a designer and wholesaler of both men and women’s clothing. Judi Lambert, owner and president of Lambert, created the “Boy Skull” design (the “Lambert Skull”) in 2004 for use on men’s and women’s clothing. The Lambert Skull is registered as a United States Copyright; plaintiff is the owner by assignment of the copyright for the Skull. Defendant LJBC, Inc. dba Laguna Beach Jeans Co. (“LBJC”) is also a clothing designer and retailer; in or around March 2010, LBJC acquired inventory from JLJ, Inc. (“JLJ”), which they sold at extremely discounted prices. A portion of the inventory acquired from JLJ included apparel bearing a skull design (the “LBJC Skull”), which is extremely similar to the Lambert Skull. The LBJC Skull was registered on the Principal Register of the United States Patent and Trademark office in March of 2009. Plaintiff contends that the trademark and copyrights of the two logos featuring a skull, which the parties have used on their respective apparel products, constitutes copyright infringement, trademark infringement, and unfair competition. Defendants argue that the Lambert Skull is not original because it is “age-old” and has been “featured in celebrations of Dia de los Muertos for centuries.” The Court disagreed; while it is similar to many of these skulls, it is still unique. Section 43(a) of the Lanham Act provides for a civil action against any person who "uses in commerce any word, term, name, symbol, or device" which is likely to "cause confusion . . . as to the origin, sponsorship, or approval of his or her goods." “To prevail on a claim for trademark infringement under this section, a plaintiff must prove: (1) ownership of a valid trademark; (2) use of the mark without its consent; and (3) that such use is likely to cause confusion. Even without a valid trademark registration, a trademark infringement plaintiff may still demonstrate superior rights to a trademark by establishing that it was the first user of the mark in commerce, however, such prior use must be ‘continuous,’ and not merely ‘transitory.’” The Court held that disputed issues of material fact existed regarding the strength of the mark, proximity of the goods, evidence of actual confusion, the degree to which the parties’ marketing channels converge, and the type of goods and degree of care exercised by purchasers. Accordingly, the Court held that the “consumer confusion” element of plaintiff’s claim under the Lanham Act was not suitable for determination on a motion for summary judgment. Due to genuine issues of material fact, both plaintiff and defendants’ motions for summary judgment were DENIED.