SURVIVAL OF THE FITTEST

Truth is stranger than fiction, if this little snippet from Metropolitan News-Enterprise is anything to go by.

Promotional products tied to the “Survivor” reality television series did not infringe the trade mark rights of a company already marketing beachwear and related products using the name “Surfvivor”. Judge Johnnie B. Rawlinson (Ninth U.S. Circuit Court of Appeals) ruled last week that the trial court in Hawaii properly granted summary judgment in favour of Survivor Productions, CBS Broadcasting Inc. and other entities associated with the popular show in the litigation brought by Surfvivor Media Inc. and Peter S. Deptula. “Survivor”'s producers said they knew of Deptula’s trade mark and the logos he used to promote his company’s sunscreen, t-shirts, surfboards and other items when they created logos to promote the television series. The “Survivor” logos appeared on such items as t-shirts, shorts, and hats. Both sets of logos featured graphical depictions of exotic locales, plus the words “Surfvivor” or “Survivor” in prominent type.

Judge Rawlinson said Deptula’s mark was entitled to Lanham Act protection under as a “suggestive” mark which alludes to a product's features without actually being descriptive. She also noted that the TV program’s junior mark had achieved a level of recognition far beyond Deptula’s senior trade mark. But, applying the factors listed in the Ninth Circuit’s ruling in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, she held that Deptula could not establish infringement. First, she said, the products promoted were not so closely related that consumers would think they came from the same source:

“In this case, although both parties portray an outdoor theme, there is no
material evidence in the record that customers are likely to associate the two
products or conclude that the products come from the same source....Resolution
of this Sleekcraft factor favours Survivor”.

Nor was there substantial evidence of actual customer confusion:

“A single retailer and a single customer mistook one Survivor product as Deptula’s. A survey commissioned by Survivor showed an absence of significant confusion".

The IPKat mourns the loss of a wonderful business opportunity: if only the two sides could have got together, just think how they could have jointly promoted a composite brand.

More on Surfvivor Media, Inc. v. Survivor Productions, 02-17064 here and here (full text of judgment)
Survival of the fittest here; survival of the fattest here