K2 Advisors prevents rival use of K2 trademark

In K2 Advisors LLC v K2 Volatility Fund LP, a US district court has ruled that the defendant's use of the term 'K2' infringed the plaintiff's rights in the trademark K2. The court held this to be the case even though the defendant had used the term in a stylized form.

K2 Advisors owns a federal registration for the trademark K2 ADVISORS. It has used the mark in the field of investment and asset management for some time. The defendant, K2 Volatility (and its related fund management company K2 Capital Management), operates in a similar field of business and was using a stylized version of the term 'K2' in its promotional and marketing materials. K2 Advisors sued K2 Volatility for trademark infringement, seeking to prevent it from using 'K2' in relation to investment services.

K2 Advisors based its claim on the previous use and federal registration of the K2 ADVISORS mark. It also argued that K2 Volatility's use of the mark had been in bad faith. K2 Volatility rejected the latter argument and contended that its use of the term 'K2' in a stylized form negated any claim for trademark infringement.

The court upheld K2 Advisors' infringement claim finding that its federally registered mark for K2 ADVISORS was valid. It held that although the registered trademark was for K2 ADVISORS and not simply K2, K2 Advisors had disclaimed the word 'advisors' in its registration. The court therefore concluded that the term 'K2' constituted the dominant portion of the registered mark.

The court rejected K2 Volatility's defence that the use of 'K2' with a stylized 'K' (allegedly suggesting the Greek letter 'Kappa') and superscript '2' (allegedly evoking the word 'squared') sufficiently distinguished its mark from that of K2 Advisors. The court also held that the parties were involved in the same type of business and offered similar products and services. It reasoned that there was a significant likelihood of consumer confusion in spite of the presumed sophistication of the parties' clients.

However, the court refused to find that K2 Volatility had acted in bad faith. It stated that while K2 Volatility's efforts to discover the existence of other firms using the K2 name prior to launch may not have been exhaustive, this fact alone did not establish bad faith.

The court issued a permanent injunction against K2 Volatility prohibiting further use of the term 'K2'.

Rochelle Alpert, Brobeck Phleger & Harrison LLP, San Francisco

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