Arlington, VA – Bean, Kinney & Korman attorneys recently obtained summary judgment in favor of our clients who had been accused of infringing on the trademarks of a competitor. Our clients manufacture and distribute recreational board and DVD games.
In 2007, they introduced a generic dice game they called “Left Center Right.” The plaintiff manufactured and distributed the same generic dice game which it sold under the registered trademark “LCR.” The plaintiff claimed that defendants’ use of “Left Center Right” infringed on plaintiff’s registered trademark of “LCR” and its asserted common law trademark rights to the term “Left Center Right.”
The parties engaged in extensive discovery in the United States District Court for the Eastern District of Virginia and, at the close of discovery, the plaintiff moved for summary judgment on the issue of liability.
The defendants, represented by Bean, Kinney & Korman, opposed plaintiffs’ motion and filed their own motion for summary judgment as to all issues. We argued, among other things, that LCR was a protected trademark only because it was suggestive of the dice game in which chips are passed to the left, center or right depending upon the result of the throw of the die. However, the name “Left Center Right” is not a protectable trademark because it was merely descriptive of the play of the underlying game.
Moreover, we disputed the plaintiff’s argument that, since “LCR” is an abbreviation for Left Center Right, the LCR mark extended to and included the longer phrase. Instead, we contended that “Left Center Right” can not be confused with LCR because it did not look or sound like “LCR.” In addition, we contended that in order for “LCR,” to be protected under trademark law, it could only be suggestive of “Left Center Right,” but not its functional equivalent. Indeed, if “LCR” were interchangeable with “Left Center Right,” then LCR would be merely descriptive of the game play – – the same logic that we utilized to contend “Left Center Right” was not legally protectable.
We also challenged plaintiff’s argument that it had common law trademark rights to the name “Left Center Right” noting that, at best, plaintiff had abandoned the use of that term more than 15 years previously. Moreover, we asserted that, in addition to the descriptive nature of the mark, the plaintiff’s failure to use that phrase in a trademark capacity on its packaging undercut plaintiff’s common law trademark claims for that name.
On July 25, 2008, U. S. District Court Judge Leonie M. Brinkema issued a lengthy written opinion in which she agreed with our positions, denied plaintiff’s motion for partial summary judgment and granted summary judgment to the defendants. Accordingly, the court entered final judgment in favor of the defendants as to all issues and dismissed the case.
The defendants were represented in this case by Bean, Kinney & Korman attorneys William Krebs, Christopher Glaser and Heidi Meinzer.