The opinion of the court was delivered by: Judge Sharon Johnson Coleman
Plaintiff Akoo International, Inc. (AI) seeks a preliminary injunction prohibiting the use of the "Akoo" trademark by defendants Clifford Harris, Akoo, LLC, RP55, Inc., Ralph Reynolds and Casio America Inc. (collectively, the Harris group). Because the evidence presented thus far fails to demonstrate that the parties' concurrent uses of the trademark is likely to cause consumer confusion, the motion is denied.
In August 2004, AI filed a trademark registration application for the word "AKOO" for use with the following goods and services:
Computer software for searching and retrieving information, sites and other resources on computer networks; computer software for sending streaming media over a computer network; digital juke box, namely computer hardware and software for distributing, selecting and playing audio and video musical information' prerecorded musical sound recordings in digital format.
Providing online retail store services featuring electronics and entertainment related products, namely compact discs featuring music and digitally downloadable music.
Telecommunications services, namely, providing telephone communication services via computer networks; electronic transmission of data, images and documents via computer terminals and networks; broadcasting services, namely radio broadcasting; electronic mail services; providing multiple-user access to a computer information network; providing on-line electronic bulletin boards for transmission of messages among computer users concerning entertainment and other news items; and providing on-line chat rooms for transmission of messages among computer users concerning playing games; providing information about streaming media.
Entertainment services, namely providing a radio program in the fields of music, news, weather, sports and current events via a global computer network; providing entertainment information in the field of music.
Computer services, namely, providing search engines for obtaining data, namely, various news, radio, video and other sources available on a global computer network; computer services, namely, designing, creating and maintaining web sites for others; hosting the websites of others on a computer server for a global computer network; technical consultation services in the field of hosting the web sites of others to help others develop and maintain a webs site; technical support, namely, troubleshooting of hardware and software problems via e-mail and telephone; providing information about audio and digital technology.
AI's "Akoo" trademark was registered in March 2007. (Amended complaint, Docket #9, Attachment 1, p. 1-2.)
AI's primary business involves the installation of television screens in public places, including shopping malls, restaurants, and universities. AI's screens display music videos and other programming. Those viewing AI screens can select the videos to be displayed by sending messages to AI's network via text message or internet application. (Affidavit of Niko Drakoulis, Docket #12, Att.. 1, pars. 9, 11.) AI pays property owners, such as shopping mall proprietors, for the right to place its screens in locations such as mall food courts. (Master Lease Agreement, Section 4.1(d), Docket #12, Att. 4, p. 13.) AI then generates revenue by selling advertising on its screens. (Master Lease Agreement, Exhibit B, "Performance Thresholds," Docket #12, Att. 4, p. 51.)
Clifford Harris is a well known rap artist. In January 2007, he filed trademark applications for the word "AKOO" for use with goods described as dress suits, footwear, headwear, jackets, pants, shirts, and short-sleeved or long-sleeved t-shirts. (Amended Complaint, Docket #9, Attachments 4-7.) AI learned of the Harris application, and its representatives contacted Harris' representatives to demand that he abandon his applications. When communications between the parties' representatives failed to resolve their differences, AI filed this action against Harris and the manufacturers involved with him in the marketing and branding of apparel and watches displaying "Akoo" marks. AI seeks relief from the Harris group for trademark infringement, unfair competition, and trademark dilution under federal law, and seeks to cancel the Harris registration for the "Akoo" mark. AI also asserts state law claims against the Harris group for trademark infringement, unfair competition, and deceptive trade practices.
AI seeks a preliminary injunction that prohibits the Harris group from using the "Akoo" mark or assisting its use by others, and from doing any other act that either damages AI's goodwill or induces the belief that the parties are affiliated. AI's request for preliminary injunctive relief is based solely upon ...