Antitrust Law Daily Wrap Up, FRANCHISING & DISTRIBUTION—DMd: “Putt-Putt Fun Center” Infringed Franchisor’s PUTT-PUTT Mark, (Apr 9, 2013)

By Mark Engstrom, J.D.

Miniature golf franchisor Putt-Putt LLC was entitled to summary judgment on its trademark infringement and unfair competition claims against a company that operated a "Putt-Putt Fun Center," the federal district court in Greenbelt, Maryland, has ruled (Putt-Putt, LLC v. 416 Constant Friendship, LLC, April 5, 2013, Williams, A.).

Putt-Putt began to use the PUTT-PUTT mark in interstate commerce as early as 1955. It received a trademark registration for the mark in 1958. In 2012, Putt-Putt filed a federal trademark application for a composite mark that featured the words "Putt-Putt Fun Center" with a design that included a ribbon and two flags. A month later the defendant filed an application for the word mark PUTT-PUTT FUN CENTER. Putt-Putt sued the defendant for federal trademark infringement, unfair competition, and other violations of federal and state laws.

To establish trademark infringement, Putt-Putt had to prove that: (1) it owned a valid and protectable mark and (2) the defendant’s use of the mark created a likelihood of consumer confusion. Because Putt-Putt had been using the mark in interstate commerce since at least 1955, and had received a trademark registration for the mark in 1958, it "easily satisfied" the first element. Putt-Putt’s exclusive right to use the PUTT-PUTT mark was incontestable, and its trademark registration constituted conclusive evidence of the mark’s validity and Putt-Putt’s ownership.

To determine whether Putt-Putt had established a likelihood of consumer confusion, the court evaluated six confusion factors: (1) strength of the PUTT-PUTT mark; (2) similarity of the parties’ marks; (3) similarity of the goods and services that were identified by the marks; (4) similarity of the parties’ facilities; (5) similarity of the parties’ advertising; and (6) the defendant’s intent in choosing its mark.

Strength of mark. Putt-Putt’s exclusive ownership and right to use the PUTT-PUTT mark was incontestable, and incontestability was a significant indicator of a strong mark. Although incontestability alone did not determine the strength of a mark, the evidence before the court showed that Putt-Putt’s mark was indeed strong. According to the court, six decades of nationwide use and promotion caused the public to recognize that Putt-Putt’s mark distinguished "a unique type of family fun establishment."

The defendant argued that Putt-Putt had become a generic term for miniature golf. It supported that argument with three Internet references: (1) a "wikiHow" guide on "how to make your own [backyard] putt-putt course"; (2) an Internet user’s review of miniature golf courses in New York City; and (3) an online video that was referred to as "the greatest putt putt shot of all time." Although the defendant’s evidence comprised unauthenticated documents that failed to meet the summary judgment requirements of Rule 56 of the Federal Rules of Civil Procedure, the evidence was "clearly insufficient" to establish the genericness of the PUTT-PUTT mark, even if the evidence had been authenticated. The three Internet references reflected the view of a casual purchaser, not the widespread belief of consumers who were "looking to play miniature golf." The defendant’s evidence failed to raise a genuine issue of material fact as to the strength of the PUTT-PUTT mark, in the court’s view.

Similarity of marks. The mark used by the defendant was identical to the mark that was registered by Putt-Putt, in the court’s view. The defendant submitted an application to register the mark PUTT-PUTT FUN CENTER. Attached to that application was an image that featured a ribbon and two flags—a design that was identical to the design that Putt-Putt had included in its application, a month earlier.

Similarity of goods, services, and facilities. The parties offered similar goods and services: family entertainment that included miniature golf, batting cages, arcade games, and similar games and activities. The similarity of facilities was established because the defendant operated its business in a facility that was once a Putt-Putt franchise. With respect to trademark infringement claims, "a franchise’s continued use of the franchisor’s trademark create[d] a sufficient likelihood of confusion to entitle the franchisor to at least nominal damages." In this case, the defendant was: (1) operating its business at the location of a former franchise; (2) displaying signs that bore the franchisor’s mark; and (3) providing the same services as the former franchisees. In light of these facts, the similarity of facilities factor was "easily satisfied."

Similarity of advertising. The defendant asserted that it was not responsible for various advertisements that were posted on Groupon.com, Facebook.com, Superpages.com, and the Baltimore Sun’s webpage. Nowhere, however, did the defendant address the representations on its website (www.putt-puttfuncenter.com) about the "Putt Putt Fun Center" that was located at "416 Constant Friendship Boulevard." In light of the website’s content, the similarity of advertising factor supported Putt-Putt’s position, even if the ads on the Groupon, Facebook, Superpages, and Baltimore Sun websites could not be linked to the defendant. In fact, the advertising factors weighed "significantly" in Putt-Putt’s favor.

Defendant’s intent. The defendant operated a facility that was once an authorized Putt-Putt franchise, labeled and advertised itself as "Putt-Putt Fun Center," offered consumers the same goods and services as official Putt-Putt franchisees, and used signs that included marks and designs that were incontestably owned by Putt-Putt. According to the court, the defendant’s conduct would lead ordinary consumers to believe that the defendant was an authorized Putt-Putt franchise. The defendant clearly intended to obtain a "free-ride on [Putt-Putt’s] goodwill," in the court’s view. Because the defendant failed to offer evidence to the contrary, a presumption of confusion was appropriate.

Conclusion. The confusion factors showed that the defendant’s conduct would likely cause consumer confusion. Because the defendant failed to raise a genuine issue of material fact, the court granted summary judgment to Putt-Putt on its federal trademark infringement and unfair competition claims.

The case is No. 8:12-cv-03018-AW.

Attorneys: Barry J. Fleishman (Kilpatrick Townsend and Stockton LLP) for Putt-Putt, LLC. Paul Case Aiken, II (Moses and Aiken LLC) for 416 Constant Friendship, LLC.

Companies: Putt-Putt, LLC; 416 Constant Friendship, LLC

Cases: FranchisingDistribution MarylandNews