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Use Of The Words “Putt-Putt” In Business Name Leads To Trademark Infringement Suit

Putt-Putt, LLC v. 416 Constant Friendship, LLC, et al.
Civil No., 8:12-cv-03018-AW (D. Md. 2013)
by Kevin M. Cox, Associate
Semmes, Bowen & Semmes (www.semmes.com)

Plaintiff, Putt-Putt, LLC (“Putt-Putt”), operates as a nationwide franchisor of “family fun establishments,” which feature attractions such as miniature golf courses, go-karts, bumper boats, batting cages, and video game rooms. Beginning in 1958, Putt-Putt became the owner of several federal trademark registrations for the purposes of protecting and identifying its goods and services. Recently, Putt-Putt became the owner of a federal trademark application for the term “Putt-Putt Fun Center” and a design featuring a ribbon and two flags.

Previously, the Mottley Group, LLC (“Mottley Group”) operated a Putt-Putt Fun Center at 416 Constant Friendship Boulevard in Bel Air, Maryland as an officially authorized Putt-Putt franchisee. Putt-Putt terminated the Mottley Group’s franchise agreement on June 9, 2011. Shortly after the cancellation of the franchise agreement, the Mottley Group lost possession of the above-mentioned property. Through later foreclosure proceedings, a different entity, P.D.A. LLC, came into possession of the property located at 416 Constant Friendship Boulevard.

The business presently operating at the address features signage using Putt-Putt’s federally trademarked terms and designs, including a cartoon miniature golf ball character named “Buster.” In its advertisements, the business at 416 Constant Friendship Boulevard publicly labels itself “Putt Putt Fun Center.” Advertisements for a “Putt Putt Fun Center” appear online.

On March 5, 2012, Defendant 416 Constant Friendship, LLC (“416 CF”) filed an application with the United States Patent and Trademark Office (“PTO”), seeking to register the mark “PUTT-PUTT FUN CENTER.” On its application, 416 CF stated that it had used the mark “PUTT-PUTT FUN CENTER” in commerce since January 21, 2012. The PTO issued a non-final Office Action initially refusing to register 416 CF’s application due to likelihood of confusion with several of Putt-Putt’s trademark registrations. 416 CF filed a response to the PTO’s Office Action and the PTO issued another non-final Office Action. Presently, 416 CF’s application is open and PTO proceedings are ongoing.

Putt-Putt filed suit against 416 CF alleging, inter alia, trademark infringement. Putt-Putt requested injunctive relief, compensatory and punitive damages, and the surrender of all materials bearing the Putt-Putt mark. Putt-Putt also moved for summary judgment.

Putt-Putt asserted a claim of trademark infringement in violation of the Lanham Act. Section 32(1) of the Lanham Act creates liability for the unconsented “use in commerce [of] any reproduction, counterfeit, copy, or colorable imitation of a registered mark[.]” To establish a claim of trademark infringement, a plaintiff must prove that it (1) owns a valid and protectable mark and (2) that the defendant’s use of that mark creates a likelihood of confusion. To satisfy the first prong of the test for a federal trademark infringement claim, a plaintiff must “first and most fundamentally prove that it has a valid and protectable mark.” Putt-Putt easily satisfied the first prong of the trademark infringement test, because it has used the Putt-Putt mark in interstate commerce since as early as 1955.

The second prong of the test is likelihood of confusion. The standard for likelihood of confusion is whether the unauthorized use of the mark is “likely to cause confusion, or to cause mistake, or to deceive” an ordinary consumer. In applying this standard, a trademark owner need not demonstrate actual confusion, as likelihood of confusion is the proper standard of analysis.

Seven factors assist the Court’s likelihood of confusion analysis: (1) the strength or distinctiveness of the plaintiff’s mark as actually used in the marketplace; (2) the similarity of the two marks to consumers; (3) the similarity of the goods or services that the marks identify; (4) the similarity of the facilities used by the markholders; (5) the similarity of advertising used by the markholders; (6) the defendant’s intent; and (7) actual confusion. These factors are meant to be a guide, not a “rigid formula” of application.

The analysis of the aforementioned factors lead the court to the conclusion that 416 CF’s conduct would likely confuse consumers. The court found in favor of Putt-Putt on all seven (7) factors. By establishing a likelihood of confusion, Putt-Putt demonstrated both prongs necessary for a claim of federal trademark infringement. Accordingly, because 416 CF failed to raise a genuine issue of material fact, the court granted summary judgment to Putt-Putt on its federal trademark infringement claim.