U.S. District Court for the Western District of NY rules no

Daily Record (Rochester, NY), Jun 19, 2006 by Helen Nguyen

In an action where the plaintiffs and the defendant both use trademarks that contain the word Blizzard, the U.S. District Court for the Western District of New York concluded that the defendant did not infringe on the plaintiffs' trademark.

In Daniel Mele d/b/a Blizzard Records, and Blizzard Records, Inc. v. Davidson & Associates, Inc., Judge John T. Elfvin determined that under the Lanham Act the plaintiffs were not entitled to have their trademark protected since they did not use it significantly for commercial purposes prior to the defendant's use.

The parties, trademarks

The instant case stems from similar trademarks used by the plaintiffs, Daniel Mele d/b/a Blizzard Records, and Blizzard Records, Inc., and the defendant, Davidson & Associates, Inc. (D&A).

The plaintiffs use the trademark of Blizzard Records in connection with their music business while D&A, a company that sells video and computer games, uses Blizzard Entertainment as its trademark name.

The plaintiffs adopted the Blizzard Records trademark in 1986 by filing an assumed name certificate for Blizzard Records Company. In 1999, the company established a website at www.blizzardrecords.com where it promotes and sells music for more than 700 artists worldwide.

In July 2000, Blizzard Records filed a trademark application with the U.S. Patent and Trademark Office (USPTO) for computerized online retail store services featuring prerecorded compact discs and audio tapes featuring music; and promotion of recording artists via a global computer information network.

The registration is still pending as a result of the current lawsuit.

D&A also has a website using the blizzard name at www.blizzard.com. Through its website, D&A sells video and computer games. Its three main franchise computer games are WarCraft, StarCraft and Diablo.

All of D&A's games include original music created by the company. The music was encoded so that consumers who bought the games could listen to the music in CD-like format without playing the game. The ability to play the music separately from the game was an unexpected benefit for D&A, and as result of consumer demand, the company began to sell the music separately through CDs, and by allowing it to be downloaded from its website.

While the plaintiffs did not contest that D&A had a trademark right to its video and computer games, they asserted the right did not extend to the music industry.

Parties' motions

In June 2002, the plaintiffs filed a lawsuit against D&A, in which they sought damages, and an order enjoining D&A's use of the Blizzard mark in the music industry.

In response, D&A filed two motions for partial summary judgment. It asserted it did not intentionally try to infringe on the Blizzard trademark. Prior to using the trademark, D&A had been known as Chaos Studios, but changed its name when it discovered that another company was doing business as Chaos Technologies.

After its attorneys conducted trademark searches, D&A began using Blizzard Entertainment as its trade name in 1994. D&A asserted the trademark searches did not identify any conflicting uses, and that it did not learn about Blizzard Records until November 2000 when a former employee received a promotional e-mail from one of the plaintiffs' employees.

D&A also contended that it actually acquired trademark rights before the plaintiffs based on its claim that the plaintiffs abandoned their trademark rights between 1987 and 1995.

After learning about the plaintiffs, D&A filed an application to use the Blizzard Entertainment mark with regard to its music CDs and downloads with the USPTO in February 2002. The application is pending the resolution of this action.

District court's prior decision

In a prior decision in 2004, the district court found the plaintiffs had abandoned their trademark rights between 1987 and 1995, see 15 USC Section 1127, Lanham Act.

While the court noted that the plaintiffs first used their trademark in 1986 - as compared to D&A's first initial use of its trademark in 1994 - the court found the plaintiffs failed to use their trademark for commercial purposes for the eight years between 1987 to 1995.

Specifically, the facts of the case showed the plaintiffs represented two bands during the time period - Zillion and the Chillin' Sun - and from 1987 to 1995 no commercial products were being associated with the mark. While the plaintiffs provided the bands with resources to rehearse and write songs, they did not engage in activities that exposed the public to their trademark.

Therefore, the district court determined the plaintiffs abandoned their trademark rights from 1987 to 1995.

Moreover, the court determined that the earliest time the plaintiffs could have reacquired their trademark rights was in August 1995 when they secured Chillin' Sun's attendance at two live showcases. Based on this, the court concluded D&A acquired its trademark rights before the plaintiffs.

The court, however, emphasized D&A's trademark rights were only for its computer and video games and did not extend to its music- only CDs and downloads since it did not start distributing the CDs and downloads until 2000.