Overreaching occasionally leaves trademark plaintiffs worse offthan when they started. Here, the district court invalidates a number ofplaintiff’s registrations (though doesn’t direct their cancellation; presumablydefendant could go ahead and seek that now) and leaves the remaining onesgasping for strength in the course of finding no likely confusion. (Also, thiscase is an example of descriptive marks sliding through the PTO on weaksuggestiveness findings, and suggests why this is a bad idea for competition.)
True Fit sued True & Co. for trademark infringement,seeking to prevent any use of marks containing “true” in connection withpersonalized fit matching software andservices. True Fit was founded in 2005under the name True Apparel, providing software to help retail consumers findwell-fitting jeans through truejeans.com. In late 2009, True Apparel changedits name to True Fit and began operating mytruefit.com, which offered asubstantially identical service. In2011, True Fit stopped its direct-to-consumer operations and began providingservices through e-commerce retail partners such as Macy’s and Nordstrom,launching its first partner service in October 2011 (Macy’s Denim Finder) andadding Nordstrom in March 2012. Macy’sand Nordstrom invite their customers to create a TRUE FIT profile, which isthen used to provide fitting information and ratings for various items ofapparel.
True Fit claimed to own many marks. The following hadfederal registrations: FIND YOUR TRUE FIT • TRUE FIT • TRUING UP • TRUED • TRUETO YOU • SHOP TRUE TO YOU • BROWSE AND BUY. TRUE TO YOU. The other alleged marks were unregistered: BETRUE. SHARE TRUE. • TRUE UP • TRUE FIT BRAND ACCELERATOR • TRUE FITRECOMMENDATION ENGINE • TRUE FIT SIZE • TRUE FIT SCORE • MY TRUE FIT.
True Fit argued that its marks were suggestive becauseimagination was required to draw a connection between “true” and True Fit’spersonalized fit services. No way:
This is like saying that the phrase“good food” is suggestive rather than descriptive, because it takes imaginationto appreciate what it is the chef does to make the food taste good. Theargument ignores the common meaning of “true” and its frequent use in conjunctionwith fitting and sizing. The phrase “true fit” describes what the plaintiff’ssoftware does: it helps a person pick a garment that is the person’s best fit,that is, his or her “true” fit.
The marks are descriptive. True Fit argued that the registered marks were accepted without arequirement of proving secondary meaning, entitling it to a presumption ofinherent distinctiveness. The presumption of validity is only conclusive wherea mark is incontestable; True & Co. could rebut the presumption by showingby a preponderance of the evidence that the marks were in factdescriptive.
It did so with, among other things, examples of True Fit’sown use of the registered marks, particularly TRUE FIT, as descriptive terms,e.g., “truejeans is trying on hundreds of jeans for you, to find your truefit,” and “We are excited to help you find your true fit.” True & Co. alsoprovided numerous examples of third parties using “true” or “true fit” inconnection with fitting and sizing for many products, particularlyapparel. (I wonder if my beloved Zapposwas included.) True Fit argued thatthose examples weren’t relevant because they weren’t specifically related topersonalized fit matching services. Maybe no company “that provides fit matching services via an onlinequestionnaire and a sophisticated algorithm” uses “true” as part of a mark. “Butcompany after company has used the word ‘true’ and the phrase ‘true fit’ inconjunction with fitting and sizing. The word ‘true’ has become commonplaceamong both retailers and consumers when referring to fitting and sizing….” True & Co. showed that onlineshoppers routinely search for “true fit” or “true to size.”
Given that the marks were descriptive, they needed secondarymeaning, which requires that “a significant quantity of the consuming publicunderstand the name as referring exclusively to the appropriate party.” TrueFit had no direct evidence of secondary meaning and relied instead oncircumstantial evidence of “(1) the length and manner of its use, (2) the natureand extent of advertising and promotion of the mark and (3) the efforts made inthe direction of promoting a conscious connection, in the public’s mind,between the name or mark and a particular product or venture.”
That wasn’t enough. True Fit claimed to have been using TRUE marks since 2005 and investedsignificant resources into advertising and branding, and noted that Macy’s andNordstrom have been promoting the TRUE marks to “thousands” of customers andsay that various TRUE marks are True Fit’s intellectual property in theirwebsite terms of use. This was weakevidence. First, the only markconsistently in use since 2005 was FIND YOUR TRUE FIT. At best, only TRUE FIT and TRUE TO YOU hadadditionally been used with any regularity and visibility. “It is implausible that a significant portionof the relevant consumer populationwould regard the use of BROWSE AND BUY. TRUE TO YOU. or TRUING UP as indicationthat True Fit Corporation was the source of the service provided.” Macy’s and Nordstrom used only a few of thealleged marks: Macy’s only prominently displayed the three mentioned above, andNordstrom only conspicuously displayed TRUE FIT. True Fit’s claim to own a family of TRUEmarks lacked evidence that the public associated not only individual marks, butthe common characteristic of the family, with True Fit. Thus, each mark had to be evaluatedindependently; True Fit didn’t own “true” for apparel fitting services. Given this, the only marks with “anylikelihood” of secondary meaning were FIND YOUR TRUE FIT, TRUE FIT, and TRUE TOYOU. (Suggesting that even these mightnot ultimately be found to be protectable.) The others weren’t marks.
On to likely confusion with our remaining trio, whosestrength was at best weak. The courtdidn’t buy True Fit’s claim to have invested heavily in its brand. “It was not until late 2009 that True Fitchanged its name from True Apparel and began using the phrase ‘true fit’non-descriptively.”
Similarity is determined on the basis of the overall effectof the marks. Here, the only similaritycame from the word “true”; the total effects, including designs, fonts, andcolor schemes, were “substantially different.” True Fit used a sans serif font, typically with a color scheme of darkgray, white, and red. True & Co.used a “significantly different aesthetic,” with a design of intersectinggeometrical shapes bordering and accenting “TRUE” in serif font. True Fit’sargument that the “dominant” portion of the marks was the (descriptive) word“true” was unpersuasive.
As for relatedness of the services in the minds of thepublic, the services were generally similar in that they “assist onlineshoppers in finding the right fit by filling out an online quiz that does notrely on measurements.” But True Fit currentlyoffered its services only for denim and selected other apparel, not lingerie,whereas True & Co.’s services were primarily for lingerie and incidentallyfor sleepware. The differences minimizedthe likelihood that the public would see the services as related; True Fit’sintent to enter the lingerie market at some time in the future was of no aid toit.
In addition, True & Co.’s unconventional business modelfurther distinguished it: customers choose three bras they want, and a stylistthen chooses two additional bras; customers pay a refundable deposit, but arecharged only for the items they keep. Bycontrast, True Fit just did fitting, and Macy’s and Nordstrom took care of therest of the transaction, “notably in a very ordinary manner. The novelty of True& Co.’s services limits the likelihood of confusion.” Thus, the mere shared use of fittingtechnology would not make the services related in the public’s mind.
Both parties use the internet to provide their services, butso does everybody; this fact means little, if anything. Anyway, True Fit’s software was onlyavailable through retailers’ websites, while True & Co. operated its ownwebsite. Both companies advertised viathe internet, magazines, and television, but True Fit primarily advertised tobusinesses (its paying customers), and True & Co. advertised only toconsumers (its paying customers). Their messages and marketing strategiesdiffered: True Fit focused on technology and innovation, while True & Co.promises a new bra shopping “experience.”
The channels of trade were therefore also distinct—customers“often” use True Fit services because they chose Macy’s or Nordstrom, notbecause they have prior knowledge of True Fit. Given the weakness of True Fit’s marks, “[i]t is highly likely that aconsumer will use True Fit’s services unwittingly and come away with theunderstanding that Macy’s or Nordstrom is the source of the services..” But it was “extremely unlikely” that acustomer would end up at True & Co’s website unknowingly.
The advertising was “substantially different,” particularlywhen considering the sophistication of the customers: primarily female onlineshoppers. (Macy’s offered True Fitservices for men’s denim, but True & Co. didn’t offer any services formen.) In a footnote, the courtelaborated that “women who shop online are likely to be more sophisticated andmore aware of the nuances of marketing and e-commerce than the averageconsumer.” They were likely to noticethat True Fit was always advertised in conjunction with a major retailer, whileTrue & Co. advertised only its own site. (NB: I saw this reported in theElectronic Commerce & Law Reporter as “women are more sophisticated thanmen.” I think the court’s actual languageis more nuanced. I don’t know that I’mextra sophisticated when I shop for clothes online, but I do pay attention tothe related questions of fit and of return policies.)
True Fit argued that the parties targeted exactly the sameprospective purchasers. This was“technically untrue”—True Fit sells only to businesses—but the ultimateconsumers might be the same. Though thisfactor favored True Fit, it didn’t help given the weight of the other factors.
True Fit submitted one instance of alleged initial interestconfusion, a single call made by a non-customer; the court wasn’timpressed. Likewise, the court didn’tfind bad faith, even though True Fit alleged that True & Co. decided tochange the company name only after visiting True Fit and Macy’s websites, andit launched its website a few weeks after receiving a C&D. But the evidence showed that True & Co.registered yourtruefit.com and trueandco.com before it was aware of True Fit’smarks, and, while it attempted to remove all TRUEFIT references, it believedthat its continued use of “true” was infringing. The court agreed that True Fit failed to showthat True & Co. intended to capitalize on True Fit’s reputation orgoodwill.
Given the huge weight of the factors, confusion wasunlikely. And of course the otherfactors therefore didn’t support the grant of a preliminary injunction. True Fit argued that it was sufferingirreparable harm because True & Co. received negative press because of itsfailure to timely process orders after its initial launch in summer 2012. But it didn’t provide evidence of ongoingnegative reviews, and any injury sustained could be adequately compensatedlater. Plus, a preliminary injunctionwould force True & Co. to completely rebrand, causing it significant injuryand having an effect tantamount to a permanent injunction. Though there’s a public interest in avoidingconfusion, there’s also a public interest in free competition.
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