page where he or she can read the message, view the list of documents
associated with that delivery, and download the documents. Id. ¶¶
33-35. Other than the email delivery notification, all Web pages
encountered by the sender or recipient bear the docSpace logo in the
upper left hand corner of the page. Id. ¶ 39, Exh. 1.
Defendant's other service, docSpace Drive, is a Web-based document
storage service that allows people to access documents stored in one
centralized, secure location. Id. ¶ 40. DoeSpace Drive allows users
to back up document files, organize files in directory structures and
perform other file management operations. Id. ¶ 40. All Web pages
that the docSpace Drive user encounters include the docSpace logo in the
upper left corner of the page.
Defendant's logo (the "docSpace logo") is a black outline drawing of a
rectangular file folder with a black keyhole design at the center and
graduated horizontal lines extending from the left edge. See Serbinis
Decl. Exh. 5. The word "docSPACE" appears directly below the graphic,
with "doc" in lower case bold and "SPACE" in upper case outlined
letters. Id. Michael Serbinis, co-founder of defendant and creator of the
logo, does not believe that he was aware of the PostX logo when he
designed the docSpace logo in January and February of 1998. Serbinis
Decl. ¶¶ 2, 42, 45, 49. DocSpace has spent close to $600,000 in
connection with the marketing of the docSpace logo through design of its
graphics and Internet Web site, publications, advertising, promotions,
mailings, public relations and trade shows. Chrapko Decl. ¶ 41.
Plaintiff filed a complaint for injunctive relief and damages against
defendant on March 22, 1999, alleging trademark infringement and false
designation of origin, trademark dilution and unfair competition.*fn1 On
the present motion for a preliminary injunction, plaintiff states that it
"is not requesting that docSpace cease use of its logo," but is rather
"merely requesting that docSpace cease from using the keyhole picture in
its mark." Plaintiffs Reply in Support of Motion for Preliminary
Injunction ("Reply") at 14:13-14.*fn2
A court may issue a preliminary injunction where the moving party has
shown (1) a combination of probable success on the merits and the
possibility of irreparable injury or (2) that serious questions are raised
and the balance of hardships tips sharply in its favor. Rodeo
Collection, Ltd. v. West Seventh, 812 F.2d 1215, 1217 (9th Cir. 1987).
"These are not two distinct tests, but rather the opposite ends of a
single `continuum in which the required showing of harm varies inversely
with the required showing of meritoriousness.'" Id., quoting San Diego
Comm. Against Registration & Draft v. Governing Rd. of Grossmont
Union High Sch. Dist., 790 F.2d 1471, 1473 n. 3 (9th Cir. 1986).
A. Likelihood of Success on the Merits — Trademark Claim
In order to succeed on its federal trademark claim, plaintiff must
establish both (1) that it has a protected interest (or trademark right)
in the service allegedly infringed by defendant's service and (2) that
defendant's service usage is likely to cause consumer confusion and thus
infringe upon that interest. Levi Strauss & Co. v. Blue Bell, Inc.,
778 F.2d 1352, 1354 (9th Cir. 1985).
1. Protected Interest
Plaintiff has been using its trademark logo since 1996. Inherently
distinctive trademarks and suggestive trademarks are protected without
evidence of secondary meaning. See AMF, Inc. v. Sleekcraft Boats,
599 F.2d 341, 349 (9th Cir. 1979). Defendant does not argue that
plaintiffs mark is unprotected. The court finds that plaintiff has
satisfied this element.
2. Likelihood of Confusion
Although the Ninth Circuit has enumerated likelihood of confusion tests
as guidelines for the district court, the tests were not meant to recite
required factors, but rather were meant to serve as "a nonexclusive
series of factors that are helpful in making the ultimate factual
determination." Eclipse Assocs. Ltd. v. Data General Corp., 894 F.2d 1114,
1118 (9th Cir. 1990). These factors include: strength of mark, proximity
of the goods, similarity of marks, evidence of actual confusion,
similarity of marketing channels, care likely to be exercised by
purchaser and intent of second user. Id. at 1117 and n. 2; Sleekcraft, 599
F.2d at 348-49.*fn3
(a) Strength of Mark
A mark's "strength" is one of the factors to be considered in
determining likelihood of confusion.
The strength of a given mark rests on its
distinctiveness. The scope of protection afforded a
strong mark is greater than that afforded a weak one.
In determining the distinctiveness of a mark one looks
to the degree to which the public associates the mark
with the particular source. As we stated in Rodeo
Collection, a "mark's strength can be measured in
terms of its location along a continuum stretching
from arbitrary, inherently strong marks, to suggestive
marks, to descriptive marks, to generic, inherently
weak marks." [citation omitted].
Miss World (UK) v. Mrs. America Pageants, Inc., 856 F.2d 1445, 1448 (9th
Cir. 1988). "In general, the more unique or arbitrary a mark, the more
protection a court will afford it." Nutri/Systems, Inc. v. Con-Stan
Indus., Inc., 809 F.2d 601, 605 (9th Cir. 1987). "Generic" marks are
afforded no protection; "descriptive" or "suggestive" marks are given
moderate protection and "arbitrary" or "fanciful" marks are awarded
maximum protection. Id. Arbitrary or fanciful marks are "strong," whereas
descriptive or suggestive marks are "weak." Id. A descriptive mark
"describes a characteristic or ingredient of an article or service
(i.e., `Park `N Fly')," while a suggestive mark "suggests, rather than
describes, an ingredient, quality or characteristic (i.e., Sleekcraft)."
We apply the "imagination test" and the "need test" to
determine the strength of a mark. [citation]. The
imagination test asks how much imagination a consumer
must use to associate a given mark with the goods or
services it identifies. The product signified by an
arbitrary mark requires great imagination. The more
imagination required, the stronger the mark is. The
"need test" approaches the problem from the opposite
end. It asks to what extent a mark is actually needed
by competitors to identify their goods or services. If
"the message conveyed by the mark about the goods or
services is so direct and clear that competing sellers
would be likely to [need to] use the term in
describing or advertising their goods [or services],
then this indicates the mark is descriptive."
[citation]. As the amount of imagination needed
increases, the need of the mark to describe the
product decreases. [citation].
Miss World, 856 F.2d at 1449.