Independent Living Aids v. Maxi-Aids

Citation: Independent Living Aids, Inc. v. Maxi-Aids, Inc., 208 F.Supp.2d 387 (E.D.N.Y. 2002)(full-text) (amending previous judgment), aff’d, 69 Fed. Appx. 4 (2d Cir. 2003), 2004 U.S. Dist. LEXIS 2456 (E.D.N.Y. Feb. 21, 2004) (plaintiff’s motion to modify injunction).

Factual Background
Plaintiffs, owners of the common-law mark INDEPENDENT LIVING AIDS, compete with defendants in selling specialized products for the blind, visually impaired, and physically disabled. Plaintiffs sued defendants for common-law trademark infringement. After a trial in December 1997, the jury found that plaintiffs owned a trademark for “Independent Living Aids,” and the court permanently enjoined defendants from using plaintiffs’ trademarks with their products. In July 2002, the court clarified the judgment, stating that plaintiffs were the owners of several valid common-law trademarks, including the mark “Independent Living Aids,” and enjoined defendants from using this mark “in connection with the sale, offering for sale, distribution, advertising or promotion of any of their products. . . .”

On appeal, the Second Circuit affirmed the amended judgment, stating that it more accurately reflected the jury’s verdict. The Second Circuit rejected defendants’ argument that plaintiffs’ mark INDEPENDENT LIVING AIDS was generic and thus unprotectable. Defendants waived that argument when it stipulated to the phrase’s descriptiveness in the lower court. The Second Circuit, however, noted that the district court’s judgments were “purposefully case sensitive” and that because the capitalization issue was not raised below, plaintiffs could request the district court under Fed. R. Civ. P. 60(b) to amend the permanent injunction to make clear that plaintiffs’ trademark rights to “Independent Living Aids” also applied to the mark when used in lower-case letters.

About a year later, the district court granted plaintiffs’ motion to modify the injunction to prohibit defendants from using the mark INDEPENDENT LIVING AIDS in lower-case letters. Plaintiff argued that, without a modification of the injunction, defendants would continue to use “independent living aids” in lower-case letters on the Internet and all other media. In response, defendants contended there was a “distinct difference” between “independent living aids” and “Independent Living Aids,” and that the lower-case version could not be enjoined because it was generic.

Because the district court had already decided that plaintiff held a valid trademark for “Independent Living Aids,” the issue was not whether the lower-case version of the mark was generic. Rather, the district court framed the issue as whether the lower-case version infringed plaintiff’s [[trademark. The court granted plaintiffs’ motion, relying heavily on the parties’ use of the Internet to market and sell their products, noting that "internet search engines are not case sensitive, and an internet search for 'independent living aids' yields the same result as a search for 'Independent Living Aids.'" The court did reject plaintiffs’ motion for attorney’s fees stemming from defendants’ appeal because the appeal was not “groundless, unreasonable, vexatious or pursed in bad faith.”

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