Attorney Dean Boyd admits Lubbock attorney Matt Witt has a valid trademark for the phrase, “Get Hit? Call Witt!” – but said using it in his advertising was not improper and an example of “fair use.”
Witt filed a lawsuit last month seeking protection for his phrase, which LubbockLights.com reported here.
Witt’s suit included a screen capture of Boyd’s advertising titled, “You Meant Dean Boyd, Right? | Get Hit Call Witt?” Since then, Google searches for Witt’s trademarked phrase still show Boyd’s ad but no longer show the phrase in the ad itself.
Based on a recent federal appeals court decision, the lawsuit could come down to confusion. Are consumers confused by the ad? Witt claimed they are. Boyd claimed they are not.
“There is not likelihood of confusion, mistake, or deception arising from [Witt’s] purported mark and [Boyd’s] advertising,” Boyd’s filing said.
Boyd chose not to comment for this story. Witt was out of town and unavailable for comment but did speak to us for our previous article.
Using another’s trademark
According to the International Trademark Association, there are circumstances when someone can use a competitor’s trademark. The idea is called fair use.
For example, you can compare your own business to another like this: “Brand X tastes better than Brand Z.”
You can also use the word “iPhone” on packaging for phone cases to tell people the cases work with an iPhone, according to ITA.
Using someone else’s mark should be “honest commercial practices” that do not suggest association with the trademark owner, the ITA said.
While Witt has used the trademark since 2016, it wasn’t registered with the U.S. Patent and Trademark Office until this February.
His lawsuit did not say when the screen capture of Boyd’s ad was taken from the internet. Witt also claimed his trademark had common law protections even before it was officially registered.
Not the court’s first rodeo with this question
In light of Boyd’s response, LubbockLights.com did an Internet search to see if the federal courts have tackled this question. Specifically, if Boyd’s ad does not display the catchphrase, is it a violation of trademark protection?
The case that came up was 1-800 Contacts Inc. v. Warby Parker in the Second Circuit Court of Appeals in New York.
1-800 Contacts (which trademarked its name) sued because Warby Parker purchased Google keywords to match “1-800 Contacts.” Warby Parker’s ad comes up when searching this name on Google.
A federal court ruled Warby Parker could do this and the appeals court agreed.
“… The mere act of purchasing a competitor’s trademarks in the context of keyword search advertising does not constitute trademark infringement,” according to a legal opinion by the appeals court.
Even creating a web page somewhat resembling the color scheme and layout of 1-800 Contact’s website was not enough, it said.
“These factors alone were insufficient to establish a likelihood of consumer confusion,” the ruling said – adding that a “reasonably sophisticated” Internet shopper would know the difference between the two companies.
One other interesting item: the Second Circuit Court of Appeals has no authority over the Fifth Circuit Court of Appeals in New Orleans (according to the federal courts’ website). The Fifth Circuit, where a case from Lubbock would go, might come to a different conclusion.
