Storus Corp. v. Aroa Marketing, Inc. (PDF) 2008 U.S. Dist. LEXIS 11698 Decided February 15, 2008 Judge Maxine Chesney Storus sued Aroa Marketing and Skymall for trademark infringement. Storus sold money clips under the registered mark “Smart Money Clip.” The defendants challenged the validity of the mark, arguing the mark is merely descriptive, but offered no evidence to rebut the presumption of secondary meaning that attached to a registered trademark. Storus argued initial interest confusion.

Initial interest confusion occurs when the defendant uses the plaintiff’s trademark in a manner calculated to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion.

Aroa purchased “AdWords” from Google. One of the “AdWords” was “smart money clip.” If a user searched for “smart money clip,” an advertisement for Aroa would appear. The court explained that the three most important factors to look at in the context of the internet are “(1) the similarity of the marks, (2) the relatedness of the goods or services, and (3) the parties’ simultaneous use of the Web as a marketing channel.” Judge Chesney found that Aroa offered no evidence to show a lack of initial interest confusion. Further, Aroa offered no explanation for why it chose Storus’ trademark as an “AdWord.” All three factors weighed in favor of plaintiff so Judge Chesney found initial interest confusion as a matter of law. Next, Storus’ claim against Skymall was analyzed. “Skymall’s website has a search engine that consumers can use to search the Skymall website.” Skymall sold Aroa money clips. If a user were to search for “smart money clip” on Skymall’s website, she would be directed to a page that offers Aroa’s money clip.

[I]t is Storus’ theory that when a consumer asks if Skymall offers a “Smart Money Clip,” Skymall answers, “yes,” and directs the consumer to a page offering an Aroa money clip.

Although not disproving of Storus’ theory, Judge Chesney was uncomfortable ruling on the theory on summary judgment. Storus was lacking evidence to support liability. For example, nothing indicated that the phrase “smart money clip” produced any different results from the phrase “money clip.” Basically, the evidence offered at this stage was too imprecise to support summary judgment.