New Hampshire is commonly referred to as the Granite State. In one recent trademark infringement case, however, a federal court in New Hampshire did not find a likelihood of consumer confusion between website addresses for competing trade schools, where one school uses the term “NH” and the other uses the term “Granite State.”
Plaintiff Granite State Trade School, a school for training plumbers, gas fitters, and other tradesmen, sued defendant The New Hampshire School of Mechanical Trades (“NHSMT”) in state court on several trademark and unfair competition claims, including a violation of the Lanham Act. Granite State alleged that NHSMT’s website addresses – www.nhtradeschool.com and www.nhtradeschool.net – are confusingly similar to Granite State’s own address – www.granitestatetradeschool.com. Upon removal from New Hampshire state court, Granite State filed a motion seeking a preliminary injunction to prevent NHSMT to use the above-mentioned URLs during pendency of the litigation.
An evidentiary hearing on the motion took place shortly thereafter. At the hearing, Granite State offered testimony from its founder to establish that: (i) it had been using its URL continuously since 2006; (ii) it had spent nearly $60,000 on advertising in that period; and (iii) that enrollment had declined substantially starting in April 2015—alleging that NHSMT’s use of its own URLs was the contributing factor to that decline. In addition, Granite State introduced testimony from a prospective student to show evidence of actual confusion—the student enrolled at NHSMT thinking it was Granite State—and a website consultant to show a drop in Granite State’s web traffic that purportedly coincided with a pay-per-click campaign instituted by NHSMT to promote its own site.
In response, NHSMT offered testimony from its co-founder to establish, inter alia: (i) that NHSMT started using the “nhtradeschool” URLs based upon a suggestion from an advertising production director that its former URL “tnhsmt” was too hard to articulate; and (ii) that NHSMT had instituted a pay-per-click campaign in June 2014 to promote its website.
In deciding the preliminary injunction motion, Judge McCafferty first evaluated whether Granite State had demonstrated a likelihood of success on the merits of its claims—each of which requires that Granite State show: (1) its mark is distinctive; and (2) NHSMT’s alleged infringement is likely to cause confusion among consumers. Regarding the distinctiveness of Granite State’s mark, the Court first determined that the mark is descriptive. However, the Court found that the mark had acquired distinctiveness through secondary meaning because Granite State had continuously used and extensively promoted its mark for over eight years, and the New Hampshire trade school community associates the mark with Granite State.
Regarding the likelihood of consumer confusion issue, Judge McCafferty found a lack of such confusion after reviewing the available evidence using the Pignons factors. The Court noted that several factors favored Granite State—including the fact that Granite State and NHSMT operate in the same channels of trade and target the same prospective purchasers.
However, the Court determined that the other factors “heavily” favor NHSMT and denied Granite State’s preliminary injunction request. Importantly, Judge McCafferty found that the marks at issue are not visually similar and the only overlapping part is the non-descript term “tradeschool.” As a result, the Court ruled that “[w]hile New Hampshire is proudly known far and wide as the Granite State, [Granite State’s URL] is simply not similar enough to [NHSMT’s URL] to risk confounding an appreciable number of reasonably prudent purchasers exercising ordinary care.” Also, the Court found that Granite State’s evidence of actual consumer confusion was not compelling, and that NHSMT lacked any intent to deceive or mislead when it decided on its ‘nhtradeschool’ URL.
Judge McCafferty’s opinion provides a solid foundation for litigants to understand the contours of how trademark infringement claims can sometimes be evaluated, including what type and scope of evidence is needed to prove a likelihood of confusion—so that they can avoid being stuck between a rock and a hard place.
The case is Granite State Trade School, LLC v. The New Hampshire School of Mechanical Trades, Inc., Case No. 15-cv-223-LM (D.N.H.), before Judge Landya B. McCafferty. A copy of the order can be found here.
