Facts

Active Sports Lifestyle USA LLC dba Active RideShop filed a trademark infringement lawsuit against Old Navy LLC and Old Navy (Apparel) LLC.

PLAINTIFF'S CONTENTIONS:
Active owned various pending and registered domestic trademarks and at least two international trademark registration. Active also owned multiple common law trademarks for its clothing and retail store services. Active contended that it had established its trademark through continuous and extensive use of its trademarks.

Active contended that Old Navy sought to capitalize on Active's trademark by initiating a new marketing campaign that featured the trademark, ACTIVE. Active contended that Old Navy's triangle trademark infringed on Active's stylized trademarks, which also covered the clothing items and retail services. Old Navy attempted to register its trademark, but the U.S. Patent and Trademark Office refused to do so, citing that it would create a likelihood of confusion with Active's registered trademarks. Nevertheless, plaintiff contended, Old Navy continued to market its ACTIVE trademarks. In addition, plaintiff claimed, Old Navy ignored Active's cease and desist letter and continued to refuse to comply with any of Active's demands.

Active maintained that Old Navy's ACTIVE trademarks were likely to cause consumer confusion, and that Old Navy continued to infringe on its trademarks with no intention of ever stopping the infringing activity. As a result, Active asserted causes of action for federal trademark infringement, false designation of origin, reverse confusion trademark infringement, California common law trademark infringement, and unfair competition and business practices.

DEFENDANT'S CONTENTIONS:
Old Navy contended that the apparel it sells under its "Active by Old Navy" label, is high-performance workout wear, and that Active Ride Shop does not sell-high performance workout wear. Old Navy contended that it had not infringed any of Active Ride Shop's registered marks, that Active Ride Shop had not established common law rights in use of the term "Active" for apparel, that the term "active" was generic and not subject to trademark protection when used to describe active wear apparel, that Old Navy's use of the term "active" was fair use, and that Active Ride Shop was not damaged in any way by any of Old Navy's conduct.

Defendants contended that the U.S. Patent and Trademark Office refused both Active Ride Shop's application for registration of a the word "Active" for the sale of clothing, as well as Old Navy's registration for "Active by Old Navy" for the sale of clothing based on the objections of the two parties. Further proceedings before the U.S. Patent and Trademark Office on both applications were stayed pending the outcome of the case. Before trial, Active Ride Shop stipulated to dismissal of its claims that Old Navy's "boomerang" logo infringed Active Ride Shop's rights in its "triangle" logo, and Active Ride Shop also agreed to withdraw its objections to Old Navy's pending application for a trademark registration for its boomerang logo.

Result

In a special verdict, the jury found that Old Navy had infringed Active Ride Shop's registered and unregistered trademarks, and that Old Navy's use did not constitute fair use. However, the jury awarded zero damages. The jury further found that plaintiff owns the marks in issue.

Other Information

Active Ride Shop filed a post-trial motion for permanent injunction, which is set for hearing on March 3, 2014. Old Navy has opposed the motion and contends that Active Ride Shop has not established an entitlement to any injunctive relief.