Wednesday, June 30, 2010
On appeal, 138 International argued that there were genuine issues of fact regarding whether 138 International used the Mystique mark before Mystique, Inc. did so. The Court disagreed, finding that even if all of the evidence 138 international cited were taken into account, it was only evidence of 138 international's communications with its suppliers. The Court explained that not every transport of a good is sufficient to establish ownership rights in a mark, and that while use of a mark need not have gained wide public attention, secret, undisclosed internal shipments are generally inadequate. Therefore, evidence of communications with suppliers about the mark was insufficient to create an issue as to who used the mark first. 138 International also argued that Mystique should not be awarded damages because it had not registered the trademark. The Court rejected this, noting that damages may be awarded under section 43(a) of the Lanham Act, and that registration of the mark is not required. Accordingly, summary judgment was awarded to Mystique, Inc.