IP Law Daily, TRADEMARK—N.D. Cal.: Dismissal denied in Nielsen trademark dispute over ‘Label Insight’ mark, (Feb 26, 2025)

By Kevin M. Finson, J.D.

Claims for trademark infringement related to the phrase LABEL INSIGHT survived a motion to dismiss because the mark was plausibly alleged to be suggestive rather than generic or descriptive and a likelihood of confusion inquiry was too fact-intensive to be decided at the pleading stage.

Nielsen Consumer, LLC stated claims for trademark infringement against a competitor over use of Nielsen’s LABEL INSIGHT mark, the U.S. District Court in San Jose has held. The competitor had described its goods as “Powered By Label Insight.” Nielsen plausibly alleged the mark was suggestive rather than generic or descriptive, but a determination of likelihood of confusion required further development of the factual record (Nielsen Consumer LLC v. Liveramp Holdings, Inc., No. 5:24-cv-07355-SVK (N.D. Cal. Feb. 25, 2025)).

Nielsen Consumer, LLC (Nielsen) was the operator of a platform which provided consumer-facing manufacturers and retailers with data about product attributes that were being searched for by consumers. Nielsen owned a registered composite mark consisting of the words LABEL INSIGHT and a logo. Nielsen also claimed common law rights in the term LABEL INSIGHT in connection with that platform.

LiveRamp Holdings, Inc. and LiveRamp, Inc. (collectively, LiveRamp) operated a data connectivity platform which, among other things, offered information from Circana, LLC, a competitor to Nielsen. In advertising the Circana, LLC information on its website LiveRamp used the phrase “IRI Attribute Audiences Powered By Label Insight.” Nielsen brought suit for trademark infringement and unfair competition under the Lanham Act, as well as related state law claims. LiveRamp moved to dismiss for failure to state a claim.

Validity of the mark. LiveRamp argued that the common-law mark did not constitute a valid and protectable mark because it was either generic or descriptive without secondary meaning. The court found that at least some imagination was needed for a connection between the phrase LABEL INSIGHT and a consumer goods data and analysis platform, and competitors could easily describe a similar platform without using the phrase LABEL INSIGHT. The court held that Nielsen had sufficiently alleged that the common law mark was suggestive, and therefore protectable.

Likelihood of confusion. The court found that the likelihood of confusion analysis was fact-heavy and not suitable for determination at the pleading stage unless the case was so one-sided there was no doubt as to the answer. In the present case, where the marks overlapped and the parties were direct competitors, the court held that Nielsen had at least plausibly alleged a likelihood of confusion.

The court denied the motion to dismiss the Lanham Act claims, and it was undisputed that the state law claims would rise or fall with the federal claims.

The Case is No. 5:24-cv-07355-SVK.

Judge: Keulen, S.

Attorneys: Justin Mulligan (Thompson Coburn LLP) for Nielsen Consumer LLC. Christine Au-Yeung (Wilson Sonsini Goodrich & Rosati) for LiveRamp Holdings, Inc.

Companies: Nielsen Consumer LLC; LiveRamp Holdings, Inc.

Cases: Trademark CaliforniaNews