Over the years, I have accurately predicted the results of numerous ill-conceived lawsuits. Just to offer a few examples: In the midst of the disastrous Procaps v. Patheon litigation, I opined that there was no real antitrust case there and Carlton Fields had given Procaps terrible advice. I was right. Not only was the case dismissed (and affirmed by the 11th Circuit), but Procaps wound up getting hit for $15 million in attorneys’ fees. Procaps subsequently sued Carlton Fields for legal malpractice. And I was the plaintiff’s expert witness.
Then there was the time that this porn company FyreTV sued Amazon over Amazon Fire TV for trademark infringement. I mocked that one, too, and ripped it to shreds. They lost, then they appealed, and the 11th Circuit laughed them out of court.
Then there was another trademark infringement case, where HardRock Hotels sued RockStar Hotels. Once again, I predicted that one right from the jump. I said HardRock would lose and they did. Then I wrote a follow-up article explaining the whole raging dumpster fire.
Today’s case comes to us from Orlando Federal Court. The Plaintiff is a company called Six Star, Inc. Six Star sells and leases cars. They are based in Florida. Have you ever heard of Six Star? I haven’t. And I’m fairly certain that most people have no idea who they are. Well, Six Star owns the rights to the phrase “Buy Smart, Be Happy.” Once again, who knew! On the other side, we have the company TrueCar, Inc. I have heard of TrueCar. TrueCar is basically a technology and data company. TrueCar has a network of more than 16,500 dealers throughout the country. Users can log in and see car prices that other buyers have paid. Apparently, TrueCar uses the phrase “Buy Smarter, Drive Happier” as its tagline.
For some strange reason, Six Star – which apparently does not have a corporate website – has decided to sue TrueCar alleging trademark infringement. Let’s unpack this.
- “Buy Smart, Be Happy” and “Buy Smarter, Drive Happier” are not close enough as to create any realistic risk of confusion. So the core premise of the lawsuit is already a massive overreach.
- Six Star either owns various car dealerships throughout the greater Orlando area that operate under different trade names or licenses its mark to those dealerships. For instance: Audi North Orlando. Mazda Lakeland. Holler Honda. Genesis North Orlando. So this is not a situation where we have a car dealership called “Six Star” out there selling cars and using the “Buy Smart, Be Happy” tagline. In fact, I had to dig through several pages on the Audi North Orlando website before I came across the “Buy Smart, Be Happy” mantra. On some of the other websites, I couldn’t even find the tagline. Upshot: Six Star is not damaged because there is no actual Six Star brand. So who is damaged? One of these random car dealerships that uses the “Buy Smart, Be Happy” slogan one time on a random page of its website? Not compelling.
- It is absurd to suggest that TrueCar’s tagline is somehow taking advantage of goodwill associated with Six Star and its tagline/brand. Because most people have no idea who Six Star is. Show me even 3 people anywhere in the country who will say this: “I only used TrueCar because of the Buy Smarter, Drive Happier slogan. When I heard that slogan, I confused it with Buy Smart, Be Happy and immediately thought of several car dealerships in Orlando affiliated with Six Star! If it wasn’t for my loyalty to Six Star and the random car dealerships of all different brands that use the Six Star slogan, I never would have gone on the TrueCar website.”
Likelihood of Confusion
Ultimately, trademark cases are about likelihood of consumer confusion. Let’s apply the likelihood of confusion test:
- Strength of senior mark: Weak. See above. Not only that, but the original mark is entirely generic. It makes no reference to cars or driving. It could apply to literally thousands of different products or services. It’s a weak mark.
- Relatedness of products: Neutral. Both products are generally related to cars, but the similarity ends there.
- Similarity of marks: Weak. The only word in common is “Buy”.
- Actual confusion: Weak. There is no evidence of actual consumer confusion whatsoever.
- Marketing channels: Weak/Neutral. TrueCar is national and online. To the extent Six Star has any brand awareness whatsoever, it is limited to Orlando. Maybe even limited further to tv and radio advertisements in Orlando.
- Degree of purchaser care: Weak. Cars are a big purchase. The bigger the purchase, the more consumers tend to exercise caution.
- Intent of defendant: Probably neutral. But let’s give Six Stars the benefit of the doubt and say this factor favors them.
- Likelihood of expansion of product line: Weak. TrueCar is not opening its own dealerships.
Predicting the Obvious: Six Star Loses
In roughly ten minute, anyone with a decent grasp on trademark law can review the complaint and conclude that this case never should have been filed. Here’s how this goes: Six Star seeks an injunction and loses. TrueCar wins summary judgment after Six Star fails to present any meaningful evidence of consumer confusion. Six Star probably gets whacked for at least $300,000 in TrueCar’s attorneys’ fees— for a case that never should have been filed. The case is Six Star v. TrueCar, 6:20-cv-00613 (MDFL 2020).
Jonathan Pollard is a competition lawyer based in Fort Lauderdale, Florida. He has appeared in or on the New York Times, Wall Street Journal, Bloomberg, PBS News Hour, The Guardian, Fund Fire, and more. His office can be reached at 954-332-2380.