Back in December Boathouse Group, Inc. sued TigerLogic Corp. for infringing Boathouse’s POSTPOST trademark for use with a social media search applications. Boathouse moved for a preliminary injunction, which Judge Gorton allowed. As the application for registration of the wasn’t filed until the defendant started using it, it was treated by the court as unregistered.
The dispute came down to seniority of use.
Boathouse started using the mark several months before TigerLogic, but then a month into the lawsuit TigerLogic was assigned rights in the same mark from a third party who used it with other kinds of software. TigerLogic then counterclaimed for infringement against Boathouse. Not surprisingly, Judge Gorton was skeptical of TigerLogic’s assignment, noting:
it constitutes an obvious attempt by defendant not only to evade liability for conduct that likely constituted infringement at the time this suit was filed, but also to transform the suit into one focused on plaintiff’s purported infringement of defendant’s mark which only materialized, if at all, after the assignment.
Even so, based on the record before it the court declined to treat the assignment as a sham. Instead, the court found that the third party’s software was different enough from TigerLogic’s software that the priority did not transfer to TigerLogic.
With Boathouse declared the senior user, the likelihood of confusion analysis was straightforward given the similarity of the marks, services, etc. Defendant vaguely moved for expedited discovery to stave off an injunction but that motion was denied (as Judge Gorton has done before) due to a failure to specify what specific information was needed.
Injunction entered.
[In a correction to my earlier post on this case, footnote 3 of the decision states that at the time Boathouse began its service, <postpost.com> was owned by a third party who demanded $35k for the name. TigerLogic ended up with it for $3k.]
Boathouse Group, Inc. v. TigerLogic Corp., 10-12125-NMG (D. Mass. Mar. 7, 2011)
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