This international business case involves a Canadian financial services company that operated under a similar name as a short-term money lending company located in the Southern part of the United States. The lending company had a trademark in its name. Both companies operated stores with the same name that were located in Canada and the South respectively. The Canadian company eventually became a publicly traded company on the New York Stock Exchange (NYSE) and US information distribution brought their marketing and branding across international borders. The lending company brought a lawsuit alleging that the Canadian company had violated their trademark in their name. The lending company sought to introduce evidence of screenshots showing location-based Internet search results that would cause customer confusion about the two companies.
Question(s) For Expert Witness
- 1. Can a US company bring a cross-border trademark infringement action against a Canadian company if the Canadian company uses the same name as the US company?
Expert Witness Response
In this case, the US company can probably prove that the Canadian company infringed its trademark in its name. This is because the US company can probably show that searching from a computer with a Southern-based IP address for terms similar to the name of the US company will return results indicating that the Canadian company has physical locations in the South. Since the US company has locations in the South, a web search service’s geotargeting logic (that will attempt to align search terms with top results in the geographic area surrounding the user) will create consumer confusion and may dilute the trademark of the US company. If a person does a search for terms similar to the name of the Canadian company on a computer located in the South in the same city as the lending company, they will probably get results showing that the Canadian company has stores in that city in the South—when the search results actually are for the US company’s stores in the South. This could lead to a loss of business for the US company and misrepresentation of business availability. This infringement of the trademarked name by the Canadian company would harm the US company because customers might believe that the Canadian store was located in the South and employees of the US company might be flooded with calls and requests from customers seeking the Canadian company’s services. This type of infringement could cost the US company loss of labor dollars and sales over time.
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