Fall 2003-03 Use of Perfulandia mark enjoined

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Number 53
Fall 2003

Use of Perfulandia mark enjoined
for being too similar to Perfumania

Use of a mark that may create confusion with another that enjoys seniority if not allowed
by federal law. Perfumania, Inc. v. Perfulandia, Inc., 2003 U.S. Dist. LEXIS 15165.

Competitors

Zahatiel Zeballos worked as Perfumania, Inc.'s District Manager in Puerto Rico until February, 2002, when he was let go. Zeballos then joined Perfulandia, Inc., as General Manager.

Both entities are engaged in the retail sale of fragrances. Perfumania opened its first shop in Miami, in 1987, and now owns and operates 247, of which 14 are located in Puerto Rico. The first Puerto Rico store opened in 1995. The name Perfumania is a registered trademark. Perfulandia, on the other hand, opened its first store in June, 2002, and has thereafter established an additional six, all in Puerto Rico. "Perfulandia, Inc." is registered with the Puerto Rico State Department as a domestic corporation. The name Perfulandia is not a registered trademark.

Similarities

Both entities compete in the same market, with the same type of product, in basically the same locations, and pursue the same customers.

Perfulandia's mark is "extremely similar to Perfumania's mark," according to the court. "The color and stylized letters used by Perfulandia in its mark Perfulandia are identical to those used by Perfumania in its registered mark Perfumania."

Also, Perfulandia opened five of its six stores in malls where Perfumania already operated; and its sixth store is in premises vacated by Perfumania. All Perfulandia stores are within walking distance of Perfumania's.

Perfulandia began using the same type of marketing strategies that Perfumania had been using in Puerto Rico for years; even a similar slogan: Perfulandia's Genuine perfumes at outlet prices to Perfumania's Original perfumes at incomparable prices.

Customers were confused by the similarities. Customers who had purchased merchandise at Perfulandia attempted to return it at a Perfumania store, believing that both business were either affiliated or one and the same. Customers also tried to redeem Perfulandia purchase tickets at Perfumania outlets.

Trademark law protection

In general terms, trademark law seeks to prevent one seller from using a mark that is identical or similar to that of another, in a way that confuses the public about the actual source of the product offered. It serves two policy interests, according to the court:

1- to prevent confusion, mistake or deception of consumers, and

2- to preserve fair competition and the owner's goodwill investment in its mark and business.

Prerequisites

The plaintiff in a trademark infringement claim must show:

that he owns and uses the mark,

that the defendant is using the same or a similar mark, and

that such use by the defendant is likely to confuse the public, thereby harming the plaintiff.

Federal law (the Lanham Act) provides that the registration of a mark constitutes prima facie evidence of the registrant's exclusive right to use it in commerce, on the goods or services specified in the registration. Registration puts other people on constructive notice of the claims of ownership by the registrant. As a result, anyone using an identical or similar mark is impeded from claiming innocent use for lack of knowledge.

Likelihood of confusion

In order to assess a likelihood of confusion, courts employ eight factors:

1- the similarity of the marks,

2- the similarity of the goods or services,

3- the relationship between the parties' channels of trade,

4- the relationship between the parties' advertising;

5- the classes of prospective purchasers,

6- evidence of actual confusion,

7- the defendant's intent in adopting the mark, and

8- the strength of the plaintiff's mark.

Similarity is determined on the basis of the total effect of the designation, as opposed to the comparison of individual features. Applying this criterium to the marks Perfumania and Perfulandia, the court stated that "the two words have similar pronunciation, begin with the same five letters 'Perfu-' and end with the same two letters '-ia,' creating a probable and real confusion." The court added that it has been held that the initial letters and the last syllables are probably the parts of any word which impress themselves most firmly upon the memory.

With respect to the confusion element, only the likelihood of confusion need be shown; proving actual confusion is not required. Nevertheless, the court did find that Perfumania had proven actual confusion in this case.

Finally, the court mentioned that evidence of bad faith is not required in a trademark infringement case.

In light of the foregoing, the court enjoined the use of the mark Perfulandia.

"Any person who, on or in connection with any goods or services, uses in commerce any word, term, name, symbol, or device . . . which . . . is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act."

-Section 43(a) of the Lanham Act


© 2003 Goldman Antonetti & Cordova, LLC