IP Law Daily, TRADEMARK—M.D. Fla.: ACPA claim dismissed in leather cleaning product dispute, (Sep 28, 2022)

By Kevin M. Finson, J.D.

A claim for violation of the ACPA was dismissed because there was no allegation that the name was distinctive when originally registered.

A seller of home care products under the mark INK LIFTER partially succeeded in obtaining dismissal of counterclaims, the U.S. District Court in Tampa has held. Personal jurisdiction was lacking as to one defendant and a counterclaim under the Anticybersquatting Consumer Protection Act was dismissed because it lacked an allegation as to the essential element of distinctiveness. The court also declined to find that the plaintiffs had not used the INK LIFTER mark in U.S. commerce (Uniters North America, LLC v. ServeCo International, Inc., September 26, 2022, Honeywell, C.).

Uniters Group, LLC (UG) was a manufacturer of home care and repair products and services, and operated in the United States through Uniters North America, LLC (UNA). UG owned a trademark registration for INK LIFTER, which it used on its leather stain remover product. UNA and its European sister company filed suit for infringement against ServeCo International, Inc., and related entities (ServeCo), alleging that they sold a cleaning kit that contained a counterfeit INK LIFTER mark on its packaging and on the product itself.

ServeCo North America (SNA), one of the related entities, filed counterclaims against UNA, UG, and Furniture Solutions Network (FSN), a subsidiary of UG, alleging cybersquatting under the Anticybersquatting Consumer Protection Act (ACPA) and trademark infringement under the Lanham Act based on the claim that some entity had registered the web address www.serveco.net and set it to automatically redirect to FSN’s website. UNA, UG, and FSN moved to dismiss the counterclaims.

Personal jurisdiction as to FSN. FSN argued that it was not subject to suit in Florida with respect to the claims at issue. The court reviewed the Florida long-arm statute and found that neither party was a Florida resident, no tortious activity was alleged to have taken place in Florida, and no harm was alleged to have occurred in Florida. The only contact with the state was that FSN’s website contained a page directed at Florida. That page was not in any way connected to the allegations in the counterclaim, so the court found that it lacked personal jurisdiction and dismissed the claims against FSN.

ACPA claim. All three counter-defendants argued that SNA failed to allege the domain was not distinctive when it was registered, as required by statute. The court held that the allegation of distinctiveness was conclusory, and was not proper to be considered. This claim was dismissed.

Use in commerce. UNA and UG argued that SNA failed to state a claim for trademark infringement because the mark was not used in commerce. The court noted that using the ServeCo name to redirect traffic to another website, even though that website did not contain any ServeCo marks itself, was clearly a use in commerce as it effectively directed people looking for ServeCo to FNS instead. The motion to dismiss this claim was denied.

The case is No. 8:21-cv-02381-CEH-AAS.

Attorneys: Andrew David Lockton (McHale & Slavin, P.A.) for Uniters North America, LLC. Amber N. Davis (Wolter Van Dyke Davis, PLLC) for ServeCo International, Inc.

Companies: Uniters North America, LLC; ServeCo International, Inc.

Cases: Trademark TechnologyInternet FloridaNews