Scandaglia v. TransUnion Interactive, Inc., 2010 U.S. Dist. LEXIS 91763 (N.D. Ill. Sept. 1, 2010)
Facts: Plaintiffs filed suit against Trans Union for infringing on their federally registered trademark. Trans Union filed a counterclaim asking the Court to order the Patent and Trademark Office to cancel the Plaintiffs’ trademark because it was descriptive and therefore not entitled to protection. Plaintiffs owned a federal trademark registration of the phrase “Always Know Where You Stand” for legal services. Despite this trademark, many other companies used this phrase in their advertising. Trans Union used the phrase in a television advertisement to promote its own trademark: “Truecredit.” Trans Union moved for summary judgment on Plaintiffs’ claim and its counterclaim.
Trademarks. The Court granted Trans Union’s motion for summary judgment on Plaintiffs’ claim because it found that Trans Union did not use the phrase to identify itself or to create awareness in the public as to the uniqueness of the service Trans Union offered. Instead, the Court held that Trans Union used the phrase to merely describe the services Trans Union offers. Trans Union used the phrase to describe a characteristic of its product, instead of trying to connect the phrase to Trans Union’s product or service. Additionally, the Court found that Trans Union did not use the phrase with any intent other than to promote its credit monitoring service. It did not have any intent to create confusion as to the source of the trademark.
Trademarks. The Court also granted Trans Union’s motion for summary judgment on its counterclaim, holding that Plaintiffs’ trademark was descriptive and lacked secondary meaning. Thus, Plaintiffs’ trademark was not protectable and the Court ordered the Director of the Patent and Trademark Office to cancel Plaintiffs’ registration of the trademark.