U.S.D.C. M.D. Fla., September 28, 2007 Click here for a copy of the full decision.
District court granted defendants’ motion for summary judgment on trademark infringement and dilution claims, finding no likelihood of confusion between plaintiff’s Ironman trademarks, many of which had been deemed “incontestable” by the Patent and Trademark Office, and defendants’ use of the term “Ironman” in the title of a reality television dating show.
The plaintiff owns the rights to use several Ironman marks in relation to the Ironman Triathlon World Championship and exercise-related products such as clothing and back packs. The plaintiff also produces television broadcasts of the competition and sells DVDs of triathlon productions (competitions with personal interest stories based on some of the competitors and training segments).
The defendants, Dawn Syndicated Productions, Telepictures Productions, Warner Bros. Entertainment, Warner Bros. Domestic Television Distribution, and WMOR-TV, produced, distributed and broadcast a reality dating show called elimiDATE Ironman Challenge.
The court applied the seven factors established in the Eleventh Circuit for determining whether there is a likelihood of confusion and found that all seven factors weighed in favor of defendants. For example, the defendants provided evidence of extensive third-party use of the term “Ironman” around the world relating to sports (Ironman Football League, Iron Man Magazine, Ironman Awards, Ironman Lifeguard Competition) and outside sports (Ironman Ministries, Iron Man comic book, Iron Man Museum). The court also noted that the term “Iron man” (whether a single word or two words) is a common English term used to describe a man of unusual physical endurance and that a mark incorporating a common English word is inherently weaker than a mark consisting of a fanciful and fictitious term. Notably, the court made this finding despite the fact that many of plaintiff’s marks had reached “incontestable” status and are presumed to be “at least descriptive with secondary meaning, and therefore relatively strong mark[s].” The lack of similarity between the two marks (“defendants’ use of the term neither looks nor sounds similar to plaintiff’s mark”), the lack of similarity in how the parties used the mark (a sports competition and a reality dating program), dissimilarity between audiences of the triathlon competition (“well educated, white collar males with a higher than average income”) and the dating show (mostly women age 18-49), different advertising and marketing channels, and the lack of any evidence of actual confusion all weighed in favor of the defendant. Although likelihood of confusion is generally a question of fact, the court found summary judgment proper because “[i]n light of the totality of the circumstances related to the parties’ products and their commercial activities, there simply is no likelihood of confusion as to origin or sponsorship of the elimiDATE Ironman Challenge.”
Turning to the dilution claim, the court emphasized that the plaintiff was not claiming that the defendant used its logo, but rather the term “Ironman”. Because of extensive third-party use of the term “Ironman” and the fact that the term is a common English term, the court reasoned that the plaintiff would not be able to show that its mark is famous for purposes of the trademark dilution statute. Even if its mark were famous, the court concluded that summary judgment is proper because the plaintiff “cannot establish either actual dilution or the likelihood of dilution. Plaintiff has not introduced any evidence demonstrating that its customers and potential customers have, as a result of Defendants’ use of the term ‘Ironman’ during its five day reality show series, formed any different impression of Plaintiff's products. Likewise, for the reasons discussed in connection with this court's determination that there is no likelihood of confusion between the two marks, Plaintiff has failed to demonstrate that there is a likelihood that a consumer would form a different impression of Plaintiff's products due to Defendants' limited use of the word ‘Ironman.’”
The court also noted that the plaintiff’s licensing agreements with Marvel Entertainment, which holds the rights to the Iron Man comic character, and the owners of the rights to Iron Man Magazine do not prohibit the plaintiff from enforcing its rights in the mark Ironman. The court said that neither agreement calls into question the validity of plaintiff’s mark nor do they extend rights to the defendants to use the Ironman mark. The court granted the defendants’ motion for summary judgment on the trademark infringement and dilution claims. The plaintiff has filed an appeal.