NeoCon is North America’s largest design exposition and conference where thousands of innovative products and resources are showcased for corporate, hospitality, healthcare, retail, government, institutional and residential interiors from more than 700 showrooms and exhibitors. NeoCon 2012 begins next Monday at The Merchandise Mart in Chicago.
Thanks to District Court Judge Joan Ericksen of the United States District Court for the District of Minnesota, next week NeoCon attendees will be able to see and experience both SEEYOND and BEYOND products, without likely confusion, when she confirmed last week in a written order her previous oral denial of the plaintiffs’ motion for a temporary restraining order in Verscene Inc. and Seeyond Inc. v. HNI Corporation and Allsteel Inc. (Civil No. 12-1088) (D. Minn. June 1, 2012). Interestingly, both plaintiff Seeyond and defendant Allsteel are sponsors at NeoCon 2012.
Plaintiffs sought a temporary restraining order in federal court to protect their SEEYOND brand and mark (associated with a user-controlled system that allows an interior architect or designer to create one-of-a-kind non-loadbearing walls, enclosures, and design features to customize and differentiate spaces) from being infringed by and confused with defendants’ BEYOND movable glass wall system (the court’s decision mentions the assignment of a third party’s 2011 federal trademark application, now a 2012 federal registration for BEYOND, to defendant Allsteel, but the USPTO’s online records don’t reflect it yet).
Judge Ericksen was not convinced — based on Seeyond’s showing — of any likely confusion between plaintiffs’ SEEYOND mark and defendants’ BEYOND mark, in part, because of the 2006 federal registration of yet another third party’s BEYOND mark for “products that compete, to some degree” with plaintiffs’ SEEYOND product. So, the thinking probably goes, if BEYOND can coexist with BEYOND in the same industry, with no likelihood of confusion, how can there be a legitimate conflict between SEEYOND and one of the BEYOND marks?
This is an interesting point of reliance since one third party BEYOND mark is registered under Section 66A of the Lanham Act (under the Madrid Protocol), the other is registered under Section 44(e) of the Lanham Act (based on a Canadian registration), where there is no evidence of any use in the United States required for either registration, and since the court’s decision does not reference the actual use of either third party BEYOND mark in the U.S., nor any actual use by defendant, at least as of yet, any coexistence would appear to be limited to what is “on paper” at the USPTO’s trademark database and not based on the reality of the actual U.S. marketplace for architects and interior designers.
This point is a good reminder of why trademark owners police not only the actual marketplace, but the filings at the USPTO too — trademark types call it “policing the register.”
Stay tuned for further case developments on whether Seeyond is able to move beyond the eight ball, or remains behind it.