174 F.3d 1036 (9th Cir. 1999)
Brookfield Communications, Inc., founded in 1987, gathers and sells information about the entertainment industry through software and services aimed at film studios, agents, actors, and producers.1 Around December 1993 Brookfield began marketing "MovieBuff" computer software containing searchable databases of movie credits, box-office receipts, films in development, release schedules, and executive listings; the software was sold in retail stores such as Borders and Virgin Megastores.2 Brookfield obtained a California state trademark registration for "MovieBuff" covering computer software in 1994 and filed federal applications for both goods and services marks on August 19, 1997, which issued on September 29, 1998.3
West Coast Entertainment Corporation operates more than 500 video-rental stores nationwide and has used phrases containing the words "Movie Buff" in Massachusetts advertising and promotions since at least 1988. It obtained a federal service-mark registration for "The Movie Buff's Movie Store" in 1991 covering retail sales and rentals of video cassettes and video-game cartridges. On February 6, 1996, West Coast registered the domain name "moviebuff.com" with Network Solutions.4
In May 1996 Brookfield registered "brookfieldcomm.com" and in September 1996 registered "moviebuffonline.com"; it later began selling its "MovieBuff" software and offering an online searchable database through those sites.5 In October 1998 Brookfield learned that West Coast planned to launch a website at "moviebuff.com" that would include a searchable entertainment-industry database similar to Brookfield's product.6 On November 10, 1998, Brookfield sent West Coast a cease-and-desist letter.7 The next day West Coast issued a press release announcing the imminent launch of its site featuring movie reviews, an extensive database, and online sales of movies and accessories.8
Brookfield filed suit in the United States District Court for the Central District of California on November 18, 1998, alleging trademark infringement and unfair competition under the Lanham Act.9 The district court denied Brookfield's motion for a preliminary injunction on November 30, 1998.10 Brookfield appealed and, after West Coast launched its site on January 16, 1999, this court granted an emergency injunction pending appeal on February 24, 1999. Oral argument was held on March 10, 1999.11
Whether West Coast can tack its prior use of "The Movie Buff's Movie Store" onto "moviebuff.com" to establish seniority over Brookfield's "MovieBuff" mark?12
Tacking permits a trademark owner to claim priority based on first use of a similar but technically distinct mark. This is allowed only when the marks are legal equivalents that create the same continuing commercial impression. Consumers must view the marks as indistinguishable so that the new mark serves the same source-identifying function.13
No. The marks "The Movie Buff's Movie Store" and "moviebuff.com" differ materially in the number of words, the possessive form, spacing, and the addition of ".com." West Coast made no showing that consumers regard them as identical.14 Brookfield began selling MovieBuff software in retail stores in December 1993 while West Coast first used moviebuff.com only in 1996. Brookfield is therefore the senior user.15
West Coast cannot tack its prior use and therefore cannot establish seniority over Brookfield's MovieBuff mark.16
Whether West Coast's registration of the domain name "moviebuff.com" or its later email and press-release uses constitute first use in commerce for trademark priority purposes?17
Trademark use in commerce requires bona fide placement of the mark on goods or displays in connection with their sale or transportation. The Lanham Act requires that on services the mark is used or displayed in the sale or advertising of services and the services are rendered in commerce. Mere registration of a domain name, intent to use, limited internal email correspondence, or preparation to use does not suffice.18
No. West Coast registered moviebuff.com in February 1996. It used the term in limited email correspondence in mid-1996. These acts did not place the mark before the public in a manner that associated it with West Coast's services. West Coast's first public and widespread use occurred only with its November 1998 press release announcing the site launch. That date post-dated Brookfield's August 1997 online database offering under the MovieBuff mark.19
West Coast's registration and email uses do not constitute first use in commerce, so Brookfield remains the senior user.20
Whether West Coast's use of "moviebuff.com" as a domain name for a website offering a searchable entertainment database is likely to cause consumer confusion with Brookfield's "MovieBuff" mark?21
Likelihood of confusion is determined by evaluating the similarity of the marks, the relatedness of the products or services, the strength of the senior mark, the marketing channels employed, the degree of purchaser care, the junior user's intent, evidence of actual confusion, and the likelihood of expansion.22 In the Internet context the virtual identity of marks combined with closely related entertainment-database products and shared Web marketing channels strongly supports a finding of confusion.23
Yes. The marks MovieBuff and moviebuff.com are virtually identical in sight, sound, and meaning. Both parties offer searchable entertainment-industry databases to overlapping audiences of movie professionals and consumers. Both market through the Web. Consumers searching for MovieBuff are likely to assume that moviebuff.com is Brookfield's site or is sponsored by Brookfield.24
West Coast's use of moviebuff.com as a domain name is likely to cause consumer confusion with Brookfield's MovieBuff mark.25
Whether West Coast's inclusion of "MovieBuff" or "moviebuff.com" in the metatags of its website is likely to cause initial interest confusion with Brookfield's mark?26
Initial interest confusion occurs when a junior user diverts consumers searching for the senior user's mark to its own site. The junior user thereby improperly benefits from the senior user's goodwill even if ultimate source confusion is dispelled before purchase. Such confusion is actionable under the Lanham Act. It is not fair use when the term is not merely descriptive of the junior user's own goods.27
Yes. By embedding MovieBuff or moviebuff.com in metatags, West Coast ensures that search engines list its westcoastvideo.com site when users search for MovieBuff. This diverts consumers originally seeking Brookfield's product to West Coast's similar database and capitalizes on Brookfield's goodwill. The term MovieBuff is not a descriptive English word but a suggestive trademark, so West Coast's use exceeds fair use.28
West Coast's inclusion of MovieBuff or moviebuff.com in metatags is likely to cause initial interest confusion with Brookfield's mark.29