Outhouse PR, LLC v. Northstar Travel Media, LLC

Background

Outhouse PR, LLC alleged that Northstar Travel Media, LLC used Outhouse’s federally registered word mark “WOMEN YOU SHOULD KNOW” in articles published by Northstar’s media outlet, The Business Travel News (BTN). The articles, published from 2016 through 2019, featured photographs and biographical information about women in the travel industry. Northstar also used the phrase in related banners, website addresses, and social-media posts.

Outhouse asserted claims under Sections 32(1) and 43(a)(1)(A) of the Lanham Act, the federal trademark statute, as well as common-law trademark-infringement and unfair-competition claims under New York law. Northstar moved to dismiss the amended complaint under Federal Rule of Civil Procedure 12(b)(6), which allows dismissal when a complaint does not state a legally sufficient and plausible claim.

Court’s analysis

The court noted that likelihood of consumer confusion is an element common to all of Outhouse’s claims. That issue is ordinarily evaluated using eight factors, including the strength and similarity of the marks, the proximity of the parties’ products, evidence of actual confusion, bad faith, and consumer sophistication. The court expressed skepticism about whether Outhouse had adequately pleaded likely confusion, but said further analysis was unnecessary because the claims could be dismissed on fair-use grounds.

The Lanham Act’s fair-use defense protects a defendant’s use of a trademark when the use is: (1) not as a trademark, (2) descriptive, and (3) in good faith. The court found all three requirements satisfied.

Use other than as a trademark

The court held that Northstar did not use “WOMEN YOU SHOULD KNOW” as a trademark—that is, as a symbol identifying the source of the articles. The BTN website displayed a large and prominent “BTN” masthead identifying the source of the articles. The court found the same to be true of Northstar’s social-media posts, which appeared on pages identifying BTN as the source.

The court also considered how Northstar displayed the phrase. The 2016 banner was dominated by another phrase, “MAKING CONNECTIONS,” and the 2019 banner stated “BUSINESS TRAVEL NEWS’ 2019 WOMEN YOU SHOULD KNOW.” In the court’s view, these features indicated that Northstar intended readers to identify BTN, rather than “WOMEN YOU SHOULD KNOW,” as the source.

Descriptive use

The court held that Northstar used the phrase descriptively because the articles presented women whom BTN’s audience would be interested in knowing. The phrase described the subject of the articles, not their source. The court rejected Outhouse’s argument that the use could not be descriptive because readers were not required to know the women featured. It relied on a meaning of “should” expressing what is desirable or best, concluding that the phrase described women whom BTN readers would benefit from knowing.

Good faith

The court also found that Northstar used the phrase in good faith. It reasoned that the descriptive use, the conspicuous BTN masthead, and the different font and design used by Northstar showed that Northstar intended to identify BTN as the source and use the phrase only to describe the articles’ subject. The court found that the social-media activity added little because the relevant BTN pages also clearly identified BTN as the source.

The court rejected Outhouse’s arguments that Northstar’s repeated use of the phrase and knowledge of Outhouse’s ownership showed bad faith. It held that repetition alone did not establish bad faith where the uses were descriptive, and that knowledge of trademark ownership, including knowledge gained from a registration or a cease-and-desist letter, was insufficient by itself to show an intent to create confusion.

Ruling and effect

The court held that Northstar’s alleged uses were fair uses under the Lanham Act and dismissed Outhouse’s federal trademark claims in Counts I and II. It further held that the fair-use defense also barred Outhouse’s New York common-law trademark-infringement and unfair-competition claims, and dismissed those claims as well.

Judge Naomi Reice Buchwald granted Northstar’s motion to dismiss the amended complaint, directed the Clerk of Court to enter judgment for Northstar, and ordered the case closed. The opinion does not state that the dismissal was with or without prejudice.