On November 25, 2008, Scorpiniti registered the trademark “THE GATE” with the USPTO for use in relation to “television broadcasting.” At the time, Scorpiniti’s THE GATE had only been used in association with the program Soul Search, a religious music television program produced by an associate of Scorpiniti and broadcast on central Iowa’s public access cable. Scorpiniti was not paid for, nor did he profit from, any media he provided to Soul Search. In August 2009, after approximately two years of creative development, Scorpiniti had completed two episodes of The Gate, his own religious music television program. Scorpiniti posted the pilot of The Gate on YouTube and the first episode on his personal Facebook page. As of August 2011, the YouTube video had 4,197 views. The Gate was never broadcast on television in any form, anywhere.
On January 21, 2010, FTVS filed a Trademark Application for the mark “THE GATES” in relation to “[e]ntertainment services in the nature of a television series featuring drama.” The mark was initially rejected due to a perceived likelihood of confusion between FTVS’s mark and two prior existing marks, including Scorpiniti’s THE GATE mark. FTVS responded to the USPTO, arguing there was no likelihood of confusion with Scorpiniti’s mark due to differences in the parties’ services. Specifically, FTVS argued that its mark referenced a television series featuring a specific gated community inhabited by supernatural beings, while Scorpiniti’s mark had religious significance. The USPTO withdrew its rejection of FTVS’s mark. Scorpiniti initially filed a Petition for Opposition to FTVS’s mark, which he ultimately withdrew in favor of filing suit.
FTVS’s television show, The Gates, aired thirteen episodes on ABC from June 20, 2010 through September 19, 2010. The hour long drama starring Frank Grillo and Rhona Mitra was centered upon a former Chicago police officer who moved with his family into a gated community called “The Gates,” filled with supernatural entities such as witches, werewolves and vampires. Billed as “Desperate Housewives meets Twilight,” The Gates aired on national television, was promoted by TV commercials and became the subject of numerous articles and advertisements in national newspapers and magazines. The Gates was canceled after one season. The production cost per episode was $2,247,467.00.
Scorpiniti brought suit for trademark infringement and unfair competition. In order to prevail on a trademark infringement claim, a plaintiff must prove (1) that he has a valid, protectable mark; and (2) that there has been an infringement upon the mark, judged by asking whether there is a likelihood of confusion among consumers.
No Valid Mark
US District Judge Reade found that Scorpitini had no protectable interest since he had not used his mark “in commerce” as required by trademark law. He provided music videos to a collaborator free of charge, and testified that he never received any payment in connection with his involvement. Moreover, Soul Search aired on public access television, and no evidence was presented to suggest that the public access television station carried commercial programming. Therefore, at the time Scorpitini applied to register THE GATE, he had not made a bona fide use of the mark in the ordinary course of trade.
Furthermore, the court rejected Scorpitini’s argument that he was using THE GATE in connection with the development of a future The Gate television series, noting that “advertising of services alone or token use to reserve rights in a mark for later use are not sufficient to satisfy the use requirement.”
No Infringement, Because No Likelihood of Confusion
The court then examined the question of whether, even if Scorpiniti had a validly registered mark at the time FTVS’s The Gates aired on ABC, there was a likelihood of confusion between the two parties’ marks. To do so, it considered the following factors: (1) the strength of the plaintiff’s mark; (2) the similarity between the plaintiff’s mark and the alleged infringing mark; (3) the degree to which the allegedly infringing product competes with the plaintiff’s goods; (4) the alleged infringer’s intent to confuse the public; (5) the degree of care reasonably expected of potential customers; and (6) evidence of actual confusion.
On the issue of the strength of the plaintiff’s mark (factor 1), the court held that Scorpiniti’s mark was both conceptually and commercially weak. In addition, the court found the two marks were not confusingly similar (factor 2), in part because of the presence of the “accompanying source identifier and house mark” (the ABC logo) alongside the FTVS mark. On the issue of competitive proximity (factor 3), the court went on to say that viewers were unlikely to confuse a network-quality drama series (each episode costing over $2 million to make) with a “half-hour program that features religion-themed music videos and one or two hosts acting as video jockeys.”
On the question of intent to confuse the public (factor 4), the court held that there was no evidence that FTVS intended to confuse or deceive consumers or push Scorpiniti out of the market. Additionally, the court held FTVS’s pre-filing search and work with the USPTO to ensure that there would be no likelihood of confusion with Scorpiniti’s mark did not support a finding of carelessness. The court then stated that no evidence had been presented regarding the degree of care television viewers are likely to exercise in choosing programs to watch (and therefore this factor 5 was neutral in the analysis).
On the final likelihood of confusion factor, the court held that Scorpiniti had shown no evidence of actual confusion between his mark and that belonging to FTVS. Scorpiniti pointed to four instances in support of his argument that actual confusion occurred between his mark and Fox’s. One was a comment made by his former girlfriend when she came across an advertisement for The Gates and pointed to it stating, “there you are.” Another instance was an unidentified man at a bar who asked Scorpiniti if he was the producer of The Gates. The third was a Youtube report showing that views of Scorpiniti’s The Gate pilot increased while ABC was advertising The Gates, while the fourth related to misspelled Google search results. The court held that none of these purported instances of actual confusion suggest a likelihood of confusion. The court noted that Scorpiniti’s evidence “revealed only inattentiveness on the part of the consumer” and any reverse confusion flowing from the popularity of the Fox program did not give rise to a claim on Scorpitini’s behalf.
The court granted summary judgment in favor of FTVS on the issue of alleged trademark infringement and dismissed Scorpiniti’s claims and counterclaims on several other counts. The lesson here is one any sprinter can tell you – if you’re never going to get out of the gates, you’re going to have trouble staying on your marks. In other words, a mark must actually be used in commerce to obtain rights. Secondly, in vetting entertainment title names, a junior user may not be prevented from using a similar name to one previously filed if the mark is weak and the services or goods are vastly different.