Saul Lefkowitz Moot Court Competition

Transcription

1 Saul Lefkowitz Moot Court Competition Please note: A. The Facts in this Opinion are fictional. The parties names, their businesses, and their trademarks and registrations are not intended, and should not be understood, to refer to or reference any individual (living or dead) or any institution, extant or defunct. Any resemblance to any real person, organization, product or situation is purely coincidental. The Opinion below of the U.S. District Court for the Eastern District of Utopia is imaginary. Conclusions of law within the Opinion do not represent the opinion of the International Trademark Association ( INTA ) or any of its members. No inference should be drawn about any actual person, organization, product or situation on the basis of any facts or conclusions of law in this Opinion. The Opinion was drafted without knowledge of any person s claims with respect to any trademarks or other claims of rights that are the same as or similar to those mentioned in the Opinion, and INTA takes no position with respect to any person s ownership of, or rights to, such trademarks or other claims of rights. B. Frequently, issues in a case that conceivably could be appealed are not. This Circuit, like most, will not entertain arguments that are not fairly comprehended within the formal Issues on Appeal, which in this case are: ISSUE NO. 1: Did the District Court err in granting Victory Fit s summary judgment motion to cancel MIM s U.S. Registration No. 1,234,567 on the ground that the registered mark is immoral under 15 U.S.C. 1052(a)? ISSUE NO. 2: Did the District Court err in denying Victory Fit s summary judgment motion with regard to the protectability of MIM s Fifth Symphony mark? ISSUE NO. 3: Did the District Court err in granting summary judgment in favor of MIM on its trademark infringement claim thus finding that Victory Fit s sound, color, and motion mark infringes MIM s vibration mark under 15 U.S.C. 1125(a)?

2 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF UTOPIA MIDAS IN MOTION, LLC, Plaintiff, vs. VICTORY FIT, INC. Defendant. : : : : Civ. Dkt : : Vaughan, R. Plaintiff Midas in Motion, LLC filed suit against Defendant Victory Fit, Inc., claiming that Victory Fit s sound, color, and motion mark is confusingly similar to MIM s visual vibration mark, which are both used in connection with wearable fitness devices. Both parties moved for summary judgment. In particular, Plaintiff moved for summary judgment, arguing that Defendant s mark is infringing; Defendant cross-moved for summary judgment, arguing that Plaintiff does not own a protectable trademark and that Plaintiff s federal trademark registration should be cancelled because its registered mark MIDAS is immoral. In the District of Utopia, a court may grant summary judgment only if it concludes that the moving party has demonstrated that there is no genuine issue of material fact and that, based on the undisputed facts, the moving party is entitled to judgment as a matter of law. All evidence must be viewed in the light most favorable to the non-moving party. For the reasons set forth hereafter, the Court grants Plaintiff s motion with regard to its trademark infringement claim. The court thus denies Defendant s motion for summary judgment to dismiss Plaintiff s 1

3 trademark infringement claim, but grants Defendant s motion to cancel Plaintiff s trademark registration of MIDAS on the ground that the term is immoral. FINDINGS OF FACT 1. Plaintiff Midas in Motion, LLC ( MIM ) is organized in the State of Utopia, with a principal place of business at 1377 West Main Street, Edenville, Utopia MIM is wearable technology company founded in 2004 by Charlotte Andersen and Parker Westfield. 2. Defendant Victory Fit, Inc. ( Victory Fit ) is incorporated in the State of Utopia with a principal place of business at 151 Crestview Street, Sun City, Utopia Victory Fit was founded in 2007 Aurora E. DiBorealis. PLAINTIFF: MIDAS IN MOTION 3. MIM was founded in 2004 by personal trainer and classic violinist Charlotte Andersen and her business partner, and former client, Parker Westfield who was the technology engineer involved in a number of successful new mobile technology products that made him the darling of Utopia s Technologyville. Capitalizing on the burgeoning fitness movement in the country, MIM developed and sells a wearable fitness device in the form of a bracelet that it calls MIDAS, which enables the wearer to track movement and activity throughout the day. MIM s device can only be purchased on-line directly from MIM s website. MIM filed an application to register MIDAS as a trademark for a wearable activity tracking device in 2005 and subsequently obtained a registration for the mark. Today, MIM s MIDAS wearable fitness device is the first of its kind to be sold to Utopia residents and is hugely successful. 2

4 4. The story behind MIM s naming of this wearable fitness device is both interesting and controversial, as it stems from a long-standing cultural bias in Utopia against fitness and activity. Based on historical accounts, as taught to Fifth graders in every Utopia elementary school, Midas was a political and religious leader of Utopia in ancient times. Midas, though he himself was blessed with a high metabolism and was a gifted athlete, was also a shrewd leader whose fear of being ousted from his position by his subjects drove him to implement clever strategies for keeping his subjects complacent and physically incapable of orchestrating a successful revolt. For example, Midas convinced his subjects that laziness led to happiness and peace. He issued decrees that prohibited exercise among his subjects beyond what was minimally required. While many ancient dwellers enamored with Midas were happy to comply, there grew a small sect of rebels over the decades that defied Midas rules. Midas levied strict penalties on anyone who disobeyed, and, to some, he became known as a cruel leader, much feared for the enforcement of these decrees. He ruled the country with an iron fist and his implementation of penalties against anyone who disobeyed his prohibitions on physical exercise led to a deep-seated cultural bias against physical activity. Part of this deep-seated bias stemmed from that fact that Midas renounced anyone who violated his rules and would not allow them to be buried in Utopia s great temples that offered a pathway to a peaceful afterlife. Though at this point in time Midas and his cruel implementation of laws that punished physical activity is ancient history, he left a lasting impact on Utopian culture. To some Utopian residents, Midas was a great leader who instilled values of inactivity, but to many other residents, the name Midas immediately evokes laziness, indolence, and even cruelty against those engaged in physical activity. In fact, prior to starting her company, Ms. Andersen was well-known in the fitness community for her disdain of Midas and his policies. She maintained a blog called 3

5 Midas the Monster and would frequently visit fitness centers throughout Utopia to speak out against the former leader s views on physical activity. She was even quoted in the Utopian Times as saying, Midas was an evil and ruthless leader, and Utopian citizens must unite and condemn his policies! Although Ms. Andersen had a strong following, her outspoken behavior offended some Utopian residents. 5. Against this backdrop, MIM s adoption of MIDAS for a wearable fitness device was a strange choice, and it caused quite a stir in the media, which led to a lot of free press, and record-breaking sales. But in fact, the devices were released by MIM at precisely the right time in Utopian history. Despite being a culture with a long history of inactivity, in recent years, many Utopian citizens started realizing the significant detriments to their health and well-being. Noted physicians published articles and spoke up about how Utopian citizens could improve their health and happiness by exercising. Healthcare providers and community leaders started joining forces to encourage increased activity both as a means of reducing healthcare costs (for ailments resulting from inactivity) and to promote happier, healthier living. The movement to encourage activity and promote health and fitness gained traction in Utopia and became a trend across the land, causing many Utopians to openly protest laziness and inactivity. While the term Midas had historically conjured up laziness, it also reminded Utopians of the suffering caused by their former leader. To many in Utopia, the word had quite a negative connotation. Today, the term Midas is widely considered to be offensive, and use of the word in public is viewed by many as being inappropriate and even crass. A listing from the Utopian Unabridged Dictionary (2d ed. 2003) defines the term Midas as an insensitive and vulgar noun referring to the past suffering of Utopian citizens. Nonetheless, MIM s MIDAS fitness device was heralded as a great new product that gave Utopians just what they needed. MIM s use of MIDAS, and Midas 4

6 in Motion, which was a further play on the MIDAS name and a nod to the historical figure and his controversial rules, did not seem to negatively impact sales. 6. The success of the MIDAS device, despite its controversial name, was attributable in large part to its revolutionary, user-friendly technology that promoted physical activity in the easiest possible way all a user had to do was slip on the bracelet and s/he would have immediate awareness of how active they are, which, in turn, inspired increased activity. One of the most unique features of MIM s wearable fitness device is that it issues congratulatory alerts when certain milestones are reached. The alert is delivered in the form of a black and white visual image on a screen, which is accompanied by a vibration delivered to the surface of the skin. The pattern for the alert is three quick vibrations and then a longer vibration and the image that appears on the screen is three dots and a dash, as shown here: This pattern is readily recognizable by some as being the letter V in Morse code. The pattern also corresponds to the beat of the familiar first four notes of Beethoven s Fifth Symphony, a musical piece long in the public domain. After Utopia s Second Civil War, this song became known as the Victory Symphony, with the letter V being the Roman numeral for the number five, and standing for victory. (After the war, the rhythm of this opening musical phrase was adopted and used for the letter V in Morse code.) Although the alert has no sound, people refer to it as it as duh-duh-duh-duuun. 5

7 8. Plaintiff s product has become hugely successful due to many early adopters who are prominent figures in health and wellness space. These supporters, combined with the growing fitness movement in Utopia, led to record-breaking sales of over 50 million MIDAS devices. Much of the promotion and press coverage of the success makes mention of this unique Fifth Symphony Alert. And some of the promotion touts how practical the Fifth Symphony Alert is because wearers during exercise do not necessarily have to look at the device to know they have reached fitness milestones. Plaintiff asserted that this Fifth Symphony Alert has acquired trademark significance since its adoption over ten years ago, and while MIM did not file an application to register this mark with the Utopian Trademark Office, MIM claims to own valuable common law rights in this Fifth Symphony Alert as a trademark. 9. A skit on the widely watched Friday Night Live, a show that parodies culture and politics, mocked the Fifth Symphony Alert every time the actors wearing the MIDAS device 6

8 reached various fitness goals, with over 20 million hits on the skit uploaded to the video sharing website VideoMe by the following week. Video clips of the skit highlights were featured on virtually every television news program, without using the taboo word itself to cater to the sensitivity of daytime broadcast restrictions, and embedded links to the skit were found on all the major media websites in the country. According to the notable financial newspaper Utopia Street Journal, MIM declined a buyout offer from the Technologyville giant tech company Beanstalk for fifty million ($50,000,000) dollars because it wanted access to the Fifth Symphony Alert. MIM also made a point of having a commercial air during the Super Football game featuring its Fifth Symphony Alert with football stars wearing the MIDAS device. 10. MIM is the owner of the following United States Trademark Registration on the Principal Register, which is valid and subsisting, according to USPTO records: Mark: MIDAS Goods: wearable activity tracking device, in Class 9 Registration No. 1,234,567 Application Date: February 12, 2005 Filing basis: Lanham Act 1(a) Date of First Use: May 1, 2004 Date of First Use in Commerce: June 14, 2004 Reg. Date: December 23, 2005 DEFENDANT: VICTORY FIT 11. Also trying to cash in on the growing fitness trend in Utopia, Defendant, Victory Fit, Inc. ( Victory Fit ) was formed by a Utopian entrepreneur Aureus DiBorealis in Ms. DiBorealis is known among her friends and relatives as being outspoken about fitness and health, and the detrimental effects that Midas had on Utopian culture. She is a devout non-midasian, as some would say and is active in promoting health and wellness. She also has been involved with a number of start-up business ventures over the years, some more successful than others. 7

9 Prior to forming Victory Fit, her most recent business venture had been working with the health insurance industry in developing analytics and information management tools that tracked the costs attributable to treating the different diseases and ailments resulting from, among other things, inactivity and poor health habits. Observing the huge cost of healthcare resulting from inactivity and the growing consensus in the health insurance industry to try to do something to stem the tide, Ms. DiBorealis astutely noted the huge potential for tapping into the growing acceptance of physical activity and adoption of fitness products by Utopian citizens. Noting the huge success of MIM s MIDAS wearable fitness device (having purchased one herself and become addicted to the easy access to information about activity that also tapped into a competitive desire to improve and compare it with friends and colleagues), Ms. DiBorealis formed Victory Fit, and, at record pace, raced to develop and put to market a wearable fitness device to compete with MIM s MIDAS device. 12. Within 12 months, Victory Fit launched its first wearable fitness device on the Utopian market. Unlike MIM s product, Victory Fit s device is only sold in brick and mortar retail stores and is not available for purchase on-line. The device is similar to the MIDAS device in that it is also worn as a bracelet, though the wrist band is shaped differently. The device issues alerts, but rather than through vibrations, it does so through a synchronized sound/motion/color display that appears on a small rectangular screen on the surface of the device. The alert is orchestrated to the famous introductory notes of Beethoven s Fifth Symphony, 1 with a pattern of three red diamonds and a green square appearing in sequence, one symbol at a time in synchrony with each of the pronounced 4 first notes, as shown here: 1 For purposes of this hypothetical, focus only on trademark issues and not, for example, any potential copyright issues concerning copyrights in sound recordings or compositions. 8

10 13. The Fifth Symphony s tie to Victory and the letter V formed the basis for Victory Fit s company name, which also prompted Victory Fit to name its wearable fitness device VICTORY. Defendant also felt VICTORY was an appropriate mark given the sense of accomplishment users may feel when they hear and see the sound/motion/color alert after reaching a particular level of activity. 14. Learning of the launch of this competitive product that was clearly trying to trade on the success and goodwill of the MIDAS device in the marketplace, MIM sent Victory Fit a letter demanding that it immediately cease marketing a wearable device that copies MIM s unique Fifth Symphony Alert trademark in an obvious attempt to associate itself with MIM and the huge success of MIM s MIDAS product. 9

11 15. MIM conducted a survey to prove that consumers recognized the Fifth Symphony Alert mark and identified it with MIM s wearable fitness device, and to confirm its belief that Defendant s sound alert would also be recognized as the opening notes of Beethoven s Fifth Symphony. The survey overwhelmingly confirmed that consumers identified the Fifth Symphony Alert with Plaintiff s MIDAS device, and it also confirmed that 49% of survey participants recognized Defendant s alert as the first four notes of Beethoven s Fifth Symphony. Plaintiff also asserted that its sales have substantially decreased since the launch of VICTORY and that the lesser quality of Defendant s fitness device is harming Plaintiff s reputation. For example, recent online reviews for the MIDAS device have complained of the sound alert behaving erratically and turning on even though there has been no activity, but Plaintiff s device does not use a sound alert, and MIM thus argued that these negative reviews, which actually refer to Defendant s product, evidence marketplace confusion and are the crux of MIM s rapidly declining revenues. For example, recent online reviews have complained that the sound alert on the MIDAS device behaves erratically and may turn on even though there has been no activity, but the MIDAS device does not use a sound alert. 16. Victory Fit responded to Plaintiff s letter by pointing out that it had every right to market a wearable fitness device with an alert using a visual display and sound. Further, Victory argued that although its alert is similarly based on Beethoven s Fifth Symphony, it is not infringing because Beethoven s Fifth Symphony has long been in the public domain and is not subject to any proprietary rights of MIM. Defendant asserted that its alert, which is different than MIM s alert in both sound and sight, is not confusingly similar to the Fifth Symphony Alert used by MIM. Victory also claimed that Plaintiff s alert is functional, because the vibration 10

12 serves a functional purpose in alerting the device wearer, and does not qualify as a trademark because it serves no source identifying function. 17. Alarmed by the damage that Victory Fit s VICTORY device has already done to the MIDAS device and its unique Fifth Symphony Alert mark, MIM filed a complaint for trademark infringement in the District Court of Utopia based on the alleged infringement of its common law rights in the Fifth Symphony Alert mark. Defendant filed an Answer denying MIM s claims and asserting a counterclaim for cancellation of the MIDAS trademark registration on the basis that the use and registration of MIDAS as a trademark was immoral, as the term is considered an offensive and vulgar word in Utopian society, and that the USPTO improperly granted a registration of this mark to MIM in violation of Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a). 2 The parties filed cross-motions for summary judgment. 18. After briefing and argument, the Court granted Defendant s motion for summary judgment with regard to its counterclaim and ordered the cancellation of the MIDAS registration on the basis that it was improperly registered under 15 U.S.C. 1052(a) because it is immoral, offending those who consider the term vulgar and inappropriate. The Court also granted Plaintiff s motion for summary judgment on its trademark infringement claim based on MIM s common law rights in the Fifth Symphony Alert mark, finding that the Fifth Symphony Alert is a protectable trademark that was infringed by Victory Fit s use of a confusingly similar alert, comprised of the introductory notes of Beethoven s Fifth Symphony and colorful geometric 2 For purposes of this hypothetical, only the question of whether the mark is immoral is at issue and not whether the mark may be deceptive, scandalous, or disparaging, or disparage or falsely suggests a connection with persons, living or dead. Also, please assume that Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a) is constitutional. 11

13 shapes, that was clearly adopted to trade upon MIM s use of the Fifth Symphony Alert mark and popularity in the marketplace. CONCLUSIONS OF LAW A. Jurisdiction and Venue. This action is brought pursuant to 15 U.S.C. 1125(a) and the common law of unfair competition. Jurisdiction arises under 28 USC 1331 and 1338(a) and (b). Venue is appropriate under 28 USC 1391(b)(1). Protectability of Plaintiff s Fifth Symphony Alert as a Trademark F. The Court concludes that Plaintiff s Fifth Symphony Alert mark is recognized and associated by purchasers, prospective purchasers, and listeners with the product offered by Plaintiff due to the extraordinary amount of sales and media attention the product and Plaintiff have garnered and has thus become distinctive under Section 2(f) of the Trademark Act, 15 U.S.C. 1052(f). G. Further, the Court concludes the Plaintiff s Fifth Symphony Alert is not functional. A product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article, that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage. Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982); TrafFix Devices Inc. v. Marketing Displays Inc., 523 U.S. 23, 58 USPQ2d 1001, 1006 (2001). This standard contemplates at least two possible bases upon which a finding of functionality may be made. First, if the product feature is essential to the use or purpose of the article it may be found functional. Second, if the product feature affects the cost or quality of the article, so that exclusive right to use it would put a competitor at a disadvantage, this, too, 12

14 may support a conclusion that the product feature is functional. With respect to the first factor, this Court finds that the Fifth Symphony Alert is not essential to the use or purpose of Plaintiff s device, as the device could still track fitness milestones and alert the wearer to them in myriad ways. As for the second factor, the Court, in reviewing the following four sub-factors: (1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design's utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product, finds that the Fifth Symphony Alert does not affect the cost or quality of the device so that the exclusive right to use it would put a competitor at a disadvantage. In sum, the Court finds that the Fifth Symphony Alert has acquired distinctiveness, is not functional, and is thus a protectable trademark. Defendant s motion for summary judgment with regard to the protectability of Plaintiff s mark is therefore denied. Infringement H. Plaintiff contended that Defendant s use of the geometric shapes and sound alert infringes its Fifth Symphony Alert mark. I. The legal test for whether the Fifth Symphony trademark is infringed is whether Defendant Victory Fit has used or is using in commerce any word, term, name, symbol, or device, or any combination thereof in connection with goods or services which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association with another s mark. 15 U.S.C. 1125(a)(1)(A). J. The pertinent factors in evaluating whether there is likelihood of confusion, in descending order of importance, are: (i) the resemblance of the two marks in terms of sight, 13

15 sound, and meaning; (ii) the relationship between the goods or services of the parties in terms of utility, use, and trade channels; (iii) the strength, both inherent and acquired, of the Plaintiff s mark; (iv) any evidence of actual confusion, or valid surveys indicative of such confusion; (v) an intent by the newcomer to derive benefit from the original mark s success; and (vi) any other factor recognized by this, or any other Utopian court, as probative of likelihood of confusion. Bender v. Pretzel Co., 373 F.3d 1384, 1388 (Par. Cir. 2004); American Forefathers Foundation v. All-American Founders Advocates, 696 F. Supp. 2d 14, 20 (N.D. UA 2011); Chase v. Eden Motors Corp., 682 F. Supp. 2d 1946, 1948 (E.D. UA 2010); Knights Errant d/b/a UDOP~IA v. Utopia State University, 673 F. Supp. 2d 2000, 2006 (E.D. UA 2009); Icon Hotel Organization v. Uikkon, Ltd., 665 F. Supp. 2d 1812, 1815 (C.D. UA 2008). The Court will discuss each of these factors in order. (i) The resemblance of the two marks in terms of sight, sound, and meaning: At oral argument, Defendant argued that there can be no confusion between its use of the sound alert and Plaintiff s Fifth Symphony Alert mark. Plaintiff is not using a sound mark its alert notification is comprised of a visual and vibration pattern in the form of three dots and a dash. Defendant does not incorporate the dots and dash or vibrations that are the distinguishing features of Plaintiff s Fifth Symphony Alert, and it does not create the same commercial impression as the Fifth Symphony Alert. But while the alerts are different in appearance, the sound and meaning of the Victory Fit sound alert and the MIM Fifth Symphony Alert are essentially the same. Both use Fifth Symphony as an alert and both for similar a similar reason: its association with victory. Accordingly, this factor weighs in favor of Plaintiff. 14

16 (ii) The relationship between the goods or services of the parties in terms of utility, use, and trade channels: Given the parties are both selling fitness devices and, therefore, directly competitive products, this factor weights in favor of Plaintiff. (iii) The strength, both inherent and acquired, of the Plaintiff s mark: The Plaintiff s mark is derived from Beethoven s Fifth Symphony which is arguably one of the most famous musical phrases of all time. While Beethoven s Fifth Symphony, and its well-known introductory notes, are clearly in the public domain, Plaintiff s MIDAS wearable fitness device has been hugely successful, and there is compelling evidence that consumers associate the Fifth Symphony Alert with Plaintiff s product. MIDAS has received extensive coverage in the media, with a parody of the device receiving millions of hits on the Internet. Further, Plaintiff has sold over 50 million MIDAS devices. This all compels the conclusion that Plaintiff s Fifth Symphony Alert has acquired distinctiveness and is a strong mark. This factor weighs in favor of Plaintiff. (iv) Any evidence of actual confusion, or valid surveys indicative of such confusion: Plaintiff s survey evidencing 49% confusion is a strong indication that consumers are likely to be confused. Also, the media was confusing the devices of Plaintiff and Defendant and mistakenly negatively reviewing Plaintiff s device. Accordingly, this factor weighs in favor of Plaintiff. (v) An intent by the newcomer to derive benefit from the original mark s success: The Court finds that Defendant intended to derive benefit from the Plaintiff s success. Accordingly, this factor weighs in favor of Plaintiff. (vi) Any other factor recognized by this, or any other Utopian court, as probative of likelihood of confusion: The Court is aware of none, and none has been cited by either party. The balance of these likelihood of confusion factors weighs in favor of Plaintiff. 15

17 K. The Court holds that there is a substantial likelihood of confusion, and the use of the sound alert by Defendant therefore infringes Plaintiff s rights in the Fifth Symphony mark. Plaintiff s motion for summary judgment is granted with regard to its trademark infringement claim. Defendant s motion for summary judgment to dismiss Plaintiff s infringement claim is thus denied. Immoral Mark B. Defendant petitioned to cancel Plaintiff s MIDAS trademark on the basis it was improperly registered in violation of 15 U.S.C. 1052(a) which prohibits the registration of trademarks that are immoral: No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it B. Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States. 15 U.S.C ( Trademarks registrable on principal register; concurrent registration ). C. The question of whether a mark is immoral must be determined from the position of, not necessarily a majority, but a substantial composite, of the general population. The mark must be viewed in light of the context of the goods, the relevant marketplace, and contemporary attitudes. Dictionary evidence may also be used to establish that a term or phrase has a vulgar connotation. D. The fact that Utopian citizens view the word Midas as being offensive and insensitive, together with the dictionary definition indicating that it is regarded as a vulgar 16

18 term referring to Utopia s past suffering, supports a finding that the MIDAS mark is immoral. Plaintiff has provided no evidence of a non-vulgar meaning of the term. The significance of Midas when placed on fitness devices is undeniable and further compels the conclusion that MIDAS is an immoral mark. Further, Defendant has a real interest in the cancellation of Plaintiff s trademark registration and a reasonable basis to believe that such registration causes her damage. Defendant argued convincingly that she is just one person among a large group of Utopians who believe that they are damaged and defamed by the registration of MIDAS because the mark attempts to glorify Midas and exalt his teachings to the detriment of health-conscious Utopians. Thus, Defendant s efforts to benefit the health and wellness of herself and others is directly implicated by the registration of MIDAS. Defendant even provided the Court with a copy of a petition she had signed by other people who also believe they are damaged and defamed by the registration of MIDAS. E. Thus, this Court finds Defendant has standing to challenge Plaintiff s registration, that MIDAS is immoral, and that the USPTO improperly permitted registration of the term MIDAS as a trademark in violation of 15 U.S.C. 1052(a), and hereby orders that Registration No. 1,234,567 be cancelled. Defendant s motion for summary judgment with regard to its counterclaim for the cancellation of Plaintiff s MIDAS mark is granted. WHEREFORE, this Court hereby orders the cancellation of Plaintiff s registration for the MIDAS mark and holds Defendant s use of the sound alert infringes Plaintiff s rights in the Fifth Symphony Alert. The parties cross-motions for summary judgment are thereby granted in part and denied in part. SO ORDERED. 17

19 18