Memory Lane owns a registration for its trademark, which it has been using since 2000, seen here:
Classmates.com used the phrase MEMORY LANE in connection with selling online videos. (It previously had registrations for MEMORY LANE and MEMORYLANE.COM, which were abandoned in early 2012.)
In its complaint filed in 2001, Memory Lane sought actual and punitive damages under California’s unfair competition law and the Lanham Act, claiming that Classmates.com’s use of MEMORY LANE was likely to confuse consumers. As evidence of actual confusion, Memory Lane pointed to the fact that it had received emails from Classmates.com customers complaining of unauthorized credit card charges. At the time, Classmates.com was selling its MEMORY LANE videos through the website www.memorylane.com. This domain name is only slightly different than Memory Lane’s www.memorylaneinc.com, which resulted in Memory Lane receipt of the misdirected emails.
According to Memory Lane’s complaint, “consumers are confused and mistakenly believe that Memory Lane has defrauded them or is the source of credit card charges they wish to dispute regarding transactions with defendants’ business activities.”
In response, Classmates.com argued that a relatively small number of misdirected emails (here, a few dozen) were not sufficient to support a claim of consumer confusion. It further asserted that Memory Lane lost no sales as a result of Classmates.com’s online video business, and that Memory Lane’s rights to MEMORY LANE were restricted to its logo which also features a baseball player, highlighting the very different appearance between the marks. Classmates.com argued that in light of these factors, it was unlikely that its use of MEMORY LANE would generate any customer confusion.
The test for likelihood of confusion balances various factors, including the appearance of the marks in question and evidence of actual confusion. While the words used here were identical and Memory Lane had evidence of confused customers mistakenly contacting Memory Lane rather than Classmates.com, those factors weren’t strong enough to convince a jury that customer confusion was likely. After reviewing the evidence highlighted at trial, the jury ultimately rejected Memory Lane’s customer confusion claim, finding in favor of Classmates.com. As of now, Memory Lane has plans to appeal the decision.
The case is Memory Lane Inc. v. Classmates International Inc. et al., case number 8:11-cv-00940, in the U.S. District Court for the Central District of California.