InMarket Sued for Trademark Infringement—For the Second Time

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The shopping app maker InMarket Media has managed to avoid a preliminary injunction in its dispute over trademark infringement allegations by Berkley Networks Corporation.  U.S. District Court Judge William H. Pauley III of the Southern District of New York denied Berkley Network’s request for a preliminary injunction, reasoning that, “forcing InMarket Media to abandon the ‘InMarket’ name before trial would result in significant expenses…for now, it appears Berkley can continue to coexist with InMarket Media.”


The backstory on the trademark infringement begins almost a decade ago.  InMarket is a mobile shopping marketing platform, offering “smart location” shopping apps.  Berkley Networks Corporation, which does business as InMarkit, provides a SaaS platform which enables customers to recommend and like products on retail shopping sites, via social media.  Both parties, Berkely Networks and InMarket allow consumers to receive mobile notices on their mobile devices corresponding with deals and sales at retail stores and online.


According to the complaint, Berkley Networks registered the mark ‘inMarkit” with the United States Patent and Trademark Office in 2009.  InMarket Media, originated under the name Checkpoints, which allowed users to ‘check in’ on social media at retail stores, and scan product bar codes on their cell phones to receive deals while in stores.


In 2011, Checkpoint contacted Berkley Networks to inquire about the mark ‘inMarkit,’ although the parties dispute the terms of the contact, and whether or not Checkpoint wanted to pursue a licensing agreement or not—but it was clear that there was a discussion about “problems with the continued use of the [similar sounding] names.”


Court records revealed that the impetus for the Checkpoint move to the new name was due to another prior trademark infringement lawsuit in the U.S. District Court for the Northern District of Illinois, filed by Checkpoints Mobile, LLC, several years prior.  The facts suggest that Checkpoint was seeking to change its name to InMarket Media to avoid further litigation.  Berkley alleges that after declining to license the mark, it sent a series of cease and desist letters ordering InMarket Media to stop using the name, but was unsuccessful in its bid to get InMarket to change its name.


Ironically, InMarket Media is again facing allegations of trademark infringement and unfair competition.   Whether a second name change is in the works is unknown as this point.  As InMarket Media is learning the hard way, choosing a business name and properly registering trademarks can save your business millions of dollars in litigation and headaches.


As in the InMarket case, if you have questions about your businesses name, trademark infringement, or have an issue with someone else using your intellectual property, you need an experienced business litigator who understands trademark protection.  James J. “Jim” Thomas II has more than 35 years of experience advising Georgia businesses and handling complex business litigation including intellectual property matters like trademark infringement.  Jim can help you with the analysis, evaluation, and resolution of existing and potential litigation including in intellectual property disputes. Visit online, or give Jim a call at 404-869-5248 to set up a free consultation.


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