C.A. No. 12-11006-GAO, 2013 WL 789213 (D. Mass. March 4, 2013) (O’Toole, D.J.) [Preliminary Injunction]

Plaintiff True Fit Corp. (“True Fit”) filed suit against True & Co. for trademark infringement and filed a motion for preliminary injunction, seeking to enjoin True & Co. from using “true” in connection with personalized fitting software and services. The Court (O’Toole, D.J.) denied the motion, finding that several of the asserted marks were neither distinctive nor had acquired secondary meaning. As to the marks that were protectable, the Court concluded that there was no likelihood of confusion.

True Fit was founded in 2005 and has offered services, either directly to consumers or through retailers such as Macy’s and Nordstrom, that allow consumers to enter personal information (e.g., measurements and body type) into a system which ultimately suggests several pairs of jeans that might fit the consumer well. Through this process the consumer creates a TRUE FIT profile. True & Co. is an e-commerce lingerie retailer, which has registered various domain names, including “trueandco. com” and “yourtruefit.com.” It also uses the slogan YOUR TRUE FIT.

After reviewing the familiar four part test for the grant of a preliminary injunction, the Court addressed the validity of fourteen marks, including seven federally-registered marks. As to those seven marks, the Court found that they did not achieve incontestable status and, therefore, True & Co. only needed to show that the marks are descriptive by a preponderance of the evidence. Because it was common among retailers and consumers to use the word “true” in connection with fitting and sizing, the Court found that True & Co. met its burden to show that the marks are descriptive. True Fit, therefore, was required to show that its marks had acquired secondary meaning. But the Court found that True Fit’s circumstantial evidence of secondary meaning was weak. Moreover, it rejected True Fit’s attempt to claim ownership over and secondary meaning for the “family of TRUE marks,” similar to the “Mc” mark that precedes the names of McDonald’s food items. The Court stated, “True Fit has failed to show that the public associates the word ‘true’ used in connection with apparel fitting services as indicating a common origin.” Nevertheless, the Court did find that the marks FIND YOUR TRUE FIT, TRUE FIT, and TRUE TO YOU may have a likelihood of secondary meaning. Accordingly, it turned its analysis to the question of consumer confusion.

Judge O’Toole invoked the familiar eight-part test identified in Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482 (1st Cir. 1981), in evaluating likelihood of confusion. First, although the Court found that both companies used the word “true” in their marks, the “total effects of the marks, considering their designs, fonts, and color schemes are substantially different.” With regard to the channels of trade, the Court held that the mere fact that both companies use the Internet to provide their services was not enough to favor True Fit. In fact, the Court found persuasive the argument that True Fit and True & Co. operate through different channels given that the former’s services can only be accessed through a retailer whereas the latter’s services can be accessed directly from its own website. The Court also noted that the advertising of the two companies is different and that, even though nuanced in some respects, “women who shop online are likely to be more sophisticated and more aware of the nuances of marketing and e-commerce than the average consumer.” Ultimately, the Court found that seven of the eight factors weighed against True Fit and in favor of True & Co. with respect to likelihood of confusion.

The Court gave short shrift to the irreparable harm, balancing of harms, and public interest factors. At bottom, only three marks were found likely to be protectable and, as to those three marks, True Fit did not meet its burden to show a likelihood of consumer confusion.