Jewellery designer strikes gold in infringement case

In Connelly v ValueVision Media Inc, the US District Court for the District Of Minnesota has upheld a request by a former employee of ValueVision Media Inc - a company that trades under the name ShopNBC and produces a home shopping television show - for an injunction preventing the defendant from using the name Sincerely Yours for its show.

The plaintiff, Karen Connelly, had hosted ShopNBC's home shopping show since 1992. In February 2002 Connelly developed the brand Sincerely Yours, Karen for a line of jewellery she had designed. She intended to sell the jewellery to ShopNBC for it to sell through the television show. She approached ShopNBC to discuss her outside business idea and her use of the mark to identify her jewellery. It allegedly gave its blessing. Connelly was never instructed or paid by ShopNBC to work on the designs.

In June 2002 Connelly applied to register SINCERELY YOURS, KAREN for jewellery with the US Patent and Trademark Office. Later that year Connelly negotiated a new employment agreement with ShopNBC, which created an IP ownership exception that "all inventions or innovations developed by employee solely as part of her involvement with outside interests [were the employee's]". 'Outside interests' were defined, in part, as "the business that she owns, which is a business engaged in the sale of jewellery ... on television and through the Internet". Further, the parties agreed that "employer consents to employee's ownership and participation in the above described outside interest". The first Sincerely Yours, Karen programme aired on October 12 2002.

Connelly later resigned from her position at ShopNBC and honoured a six-month non-compete provision of the contract. ShopNBC continued to air the first Sincerely Yours, Karen programme but shortened the name to Sincerely Yours. Connelly sent a cease and desist letter to ShopNBC and, when this was ignored, she filed an action for trademark infringement. She moved for a temporary restraining order to prevent ShopNBC from using the Sincerely Yours name.

ShopNBC responded that it had expended large sums of money promoting the television show. It owns 1361 pieces of jewellery (average retail price of $664) bearing the YOURS SINCERELY, KAREN mark in its inventory. Loss of use of the name would, said ShopNBC, cause it severe damage.

The US District Court for the District of Minnesota upheld Connelly's request for an injunction. It held that:

• the YOURS SINCERELY, KAREN mark is arbitrary (and thereby strong) as applied to jewellery;
  
  
• Connelly was the first actual user of the mark; and
  
  
• ShopNBC's further use of the mark inured to Connelly's benefit under the 2002 employment agreement.

Employing the US Court of Appeals for the Eighth Circuit's likelihood of confusion analysis the district court considered:

• the strength of the owner's trademark;
  
  
• the similarity between the parties' marks;
  
  
• the products' competitive proximity;
  
  
• the alleged infringer's intent to pass off its goods as those of the mark owner;
  
  
• incidents of actual confusion; and
  
  
• the type of product, its cost, conditions of purchase and the degree of care to be exercised by potential customers.

It found that the majority of factors favoured Connelly and that she was likely to succeed on the trademark infringement claim at trial.

Brian E Banner, Banner & Witcoff Ltd, Washington DC