Maryland-based Marriage Savers, Inc., a non-profit marriage counseling service and operator of www.marriagesavers.com, has filed a trademark action in the Eastern District of Virginia against Lovepath International, Inc., another marriage counseling organization, which allegedly has been conducting business using the confusingly similar domain name marriagesaver.com. As of this writing, www.marriagesaver.com has been taken down.
According to the complaint, Marriage Savers owns the federally registered trademark “MARRIAGE SAVERS” and has used the mark since the early 1990’s in connection with a wide variety of products and services, including writing printed materials and publications in the field of marriage, conducting workshops and seminars to community leaders, and offering counseling to couples.
Lovepath, according to the suit, also offers seminars, books, and online resources geared to marriage counseling and markets them using the name “Marriage Saver.” Marriage Savers contends that Joe Beam, Lovepath’s founder and president, is not only familiar with Marriage Savers and its trademarks but has actually been a speaker at its conferences.
Marriage Savers filed the lawsuit on April 20, 2009, and brings claims of trademark infringement, false designation of origin and false advertising, cybersquatting, and related common-law claims. It is asking the court to award an injunction to stop the infringing activity and prevent future infringment, to order the destruction of any infringing materials, to order that Lovepath transfer its domain names to Marriage Savers, and to award compensatory, statutory, and punitive damages.
While regrettable that these marriage-counseling services can’t seem to exist together in blissful harmony, the case looks like a strong one. Under 15 U.S.C. § 1114(1), trademark infringement exists where (1) the mark is distinctive and has been used in commerce; (2) the plaintiff is the legal or equitable owner of the mark; and (3) the defendant is using a similar mark which is likely to cause confusion among consumers as to the source of the goods and services. While one might think Lovepath could escape liability by arguing the MARRIAGE SAVERS mark lacks “distinctiveness,” in this particular case, the mark was registered over five years ago and has been used continuously ever since, resulting in “incontestable” status under 15 U.S.C. § 1065. Once a mark becomes incontestable, it may no longer be attacked for lack of distinctiveness.