Jury may read secondary meaning into HALF PRICE BOOKS

In Half Price Books Records and Magazines Inc v Barnesandnoble.com LLC (2004 US Dist LEXIS 23691 (November 22 2004) ND Tex), the US District Court for the Northern District of Texas has dismissed the defendant's motion for summary judgment against the plaintiff's claim that the defendant had infringed its HALF PRICE BOOKS mark.

Half Price Books, Records and Magazines Inc (HPB) brought suit against Barnesandnoble.com LLC (BNC) for trademark infringement and unfair competition based upon its ownership of the trade name Half Price Books, Records and Magazines Inc and a pending US application for the trademark HALF PRICE BOOKS, RECORDS AND MAGAZINES. HPB sought injunctive relief prohibiting BNC from using the phrases 'Half-Price Books and Special Values' and 'Half-Price Books' to classify certain pages on the BNC website devoted to high-quality books sold at a deep discount.

HPB's motion for a preliminary injunction was denied on August 15 2003 on the grounds that it had failed to establish evidence of secondary meaning in its mark, which was not then registered. HPB obtained a federal registration for its mark in late 2003.

BNC filed a motion for summary judgment with the US District Court for the Northern District of Texas in December 2003 claiming that HPB's mark was generic or, at best, descriptive. The court denied BNC's motion, noting that (i) a presumption of validity attached to HPB's mark by virtue of its registration, and (ii) HPB had submitted a consumer survey in opposition to the motion, which, it contended, established secondary meaning. The court held that classification of marks is an issue of fact for a jury at full trial and, based on the evidence viewed in the light most favourable to HPB, a reasonable jury might classify HALF PRICE BOOKS as a descriptive mark that had acquired secondary meaning.

The court also found that the likelihood of confusion factors (ie, similarity of marks, products, target purchasers and advertising media) favoured HPB. The court rejected BNC's fair use defence, holding that BNC's use of 'Half-Price Books' in typeface and colour reminiscent of the red used by HPB for its HALF PRICE BOOKS mark could lead a reasonable jury to find in HPB's favour on the issue of fair use.

Whether HPB will succeed after a full trial on the merits remains to be seen. The result on summary judgment appears to be a lucky escape for a highly descriptive, if not generic, sign.

Virginia R Richard, Winston & Strawn LLP, New York

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