Half Price Books, Records, Magazines v. Barnesandnoble.com

Citation: Half Price Books, Records, Magazines, Inc. v. Barnesandnoble.com, LLC, 2004 U.S. Dist. LEXIS 223691 (N.D. Tex. Nov. 22, 2004)(full-text).

Factual Background
Both parties sell books and audio and video recordings. Plaintiff operates a website at “halfpricebooks.com” and owns the federally registered mark HALF PRICE BOOKS. Defendant began using the phrases “Half-Price Books & Special Values” and “Half-Price Books” on its websites at “bn.com” and “barnesandnoble.com.”

Trial Court Proceedings
Plaintiff sued for trademark infringement and dilution. The court earlier had denied plaintiff’s motion for preliminary injunction because plaintiff failed to establish secondary meaning in its mark. At that time, however, plaintiff’s mark was not registered and plaintiff had not submitted any survey evidence.

At issue in this decision was defendant’s motion for summary judgment, which the court denied. Regarding trademark infringement, defendant argued that plaintiff’s mark HALF PRICE BOOKS was generic, relying on a 1984 TTAB determination that the mark was generic, testimony of a marketing expert, and extensive third-party use of “half-price books.” On the other hand, plaintiff’s registration created a rebuttable presumption of the mark’s validity, and plaintiff submitted expert testimony from a linguist.

On the issue of secondary meaning, plaintiff submitted a consumer survey. Viewing the evidence in the light most favorable to plaintiff, the court concluded a reasonable jury might find the mark HALF PRICE BOOKS descriptive with secondary meaning. Moreover, viewing the evidence in the light most favorable to plaintiff, a reasonable jury could find in plaintiff’s favor on the issue of likelihood of confusion. The similarity of the products, target purchasers, and advertising media all weighed “heavily” in plaintiff’s favor, and a material factual dispute existed on the similarity of the marks and defendant’s intent.

Defendant also argued it used the term not as a trademark, but in a fair-use manner only to describe its goods and services. Plaintiff disagreed, arguing that defendant prominently displayed the term as an attention-getting symbol. Because the defendant’s display of HALF PRICE “was sufficiently prominent to suggest … an affiliation between [the parties],” the court concluded that there was sufficient evidence in the record from which a reasonable jury could find in favor of plaintiff.

Finally, there was a genuine issue of fact on the distinctiveness of plaintiff’s mark under the Texas Anti-dilution Statute.

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