IP Law Daily, TRADEMARK—D. Del.: Nominative fair use defense survives summary judgment in ad data trademark case, (Mar 10, 2025)

By Steven Melendez

A federal judge refused to toss out the defense at this stage in a dispute over use of a marketing data trademark.

Marketing data company Skydeo can continue to assert a nominative fair use defense against trademark claims from rival Stirista, the federal district court in Delaware ruled, declining to issue summary judgment finding against nominative fair use (Stirista, LLC v. Skydeo Inc., No. 1:23-cv-00856-CFC-LDH (D. Del. March 7, 2025)).

Stirista is suing Skydeo for what it says is infringement of its "123PUSH" mark, which it uses for segments of marketing audience data it's sold through various online marketplaces since 2019. The company applied to the U.S. Patent and Trademark Office for a registered mark in July 2023, and the trademark was registered in September 2024, according to the ruling.

Skydeo also sells marketing data, and between 2021 and November 2024, it listed a vast array of 80,000 data segments on its website in what it called the "Skydeo Data Marketing Platform." The website didn't mention that 123PUSH was associated with Stirista, according to the ruling, and on at least one day, 123PUSH data segments were 14% of the listings in the directory.

If a potential customer clicked on a 123PUSH segment, they'd receive information about "the taxonomy of the 123PUSH segment" and an offer to share their contact information with Skydeo. Skydeo would reach out to interested customers and recommend marketing data segments to suit their needs, according to the ruling.

Skydeo acknowledges some potential customers were "actually confused about ownership" of the mark and that one third-party marketplace erroneously attributed 123PUSH data to Skydeo, according to the complaint. But the company has asserted a nominative fair use defense, which requires it to show that the allegedly infringed mark is necessary to describe both companies' product or service, that Skydeo only used as much of the mark as is necessary to describe Stirista's product, and that its "conduct or language reflect[s] the true and accurate relationship between" the two businesses' products or services, according to the ruling.

Stirista argued it's entitled to "summary judgment of no nominative fair use" because there's no genuine dispute that the 123PUSH mark wasn't actually necessary to describe Skydeo's products and services and didn't accurately reflect the relationship between the two companies' offerings. But the court declined to toss out the defense, citing testimony by Skydeo's CEO claiming Skydeo had a right to obtain 123PUSH data for customers.

"This testimony provides a sufficient (albeit slim) evidentiary basis for a rational juror to agree with Skydeo that 'its listing of the l 23PUSH listing was necessary to advise potential clients that Stirista had, or has, a data set named 123PUSH and Skydeo could act as a broker and/or buyer to obtain the data set if a potential customer was interested in using the data set,'" according to the ruling.

Stirista also argued that Skydeo's use of the mark was excessive, meaning it didn't meet requirements for nominative fair use, but the court found that's a question for a future jury, noting the company didn't cite any legal precedent where a court ruled on excessive use as a matter of law.

"Determining whether use of a mark was more than necessary to describe a product is quintessentially a question that only a jury can decide," according to the ruling.

The Case is No. 1:23-cv-00856-CFC-LDH.

Judge: Connolly, C.

Attorneys: Jack B. Blumenfeld (Arsht & Tunnell LLP) for Stirista, LLC. Stephen B. Brauerman (Bayard, P.A.) for Skydeo Inc.

Companies: Stirista, LLC; Skydeo Inc.

Cases: Trademark DelawareNews