In March of this year, the U.S. District Court for the District of Maryland denied the preliminary injunction that the Pennsylvania “Field of Screams” had sought against the Maryland “Field of Screams.” Andrew Mirsky wrote about this case last fall, a trademark infringement action involving a haunted amusement house in Pennsylvania operating under the name “Field of Screams” and a Maryland operation of the same name.
The court’s opinion denying the preliminary injunction can be viewed here. The preliminary injunction was denied on the grounds that the plaintiff was unable to show that its case was likely to succeed in court – the standard required to obtain a preliminary injunction. (To be clear, inability to show “likely to succeed” does not mean “likely not to succeed”. It is simply that the courts require a high threshold for a process involving a shortcut to a judgment where the plaintiff would be spared from actually arguing its full case before getting any remedy.) According to the ruling, the Pennsylvania operation it remained an undecided issue of fact whether the Pennsylvania operation had made continued and exclusive use of the name “Field of Screams” in the Maryland market since before the Maryland operation was started in 2002.
This point was of course significant for a trademark case seeking an injunction, even a preliminary one, since the Pennsylvania claim of trademark exclusivity would be subject to challenge by a party claiming prior use.
As some additional background, it should be noted that neither litigant owns any federally registered trademark. The Pennsylvania plaintiff is therefore claiming rights of trademark for an unregistered trademark under federal and state common law. Many of the arguments of trademark validity by a plaintiff seeking trademark enforcement – in particular, brand distinctiveness – would generally be unnecessary, where the federal Lanham Act gives registered trademark owners a presumption of validity which a defendant challenger must overcome.
The ruling also raised doubts about the ability of the Pennsylvania operation to prove its national recognition, explaining that intermittent appearances on national media and in industry media were not enough to prove the potential for confusion among consumers. Additionally, the ruling expressed doubts regarding the ability of the Maryland “Field of Screams” to impact the business of the Pennsylvania “Field of Screams,” because there was evidence indicating that very few of the customers of the Pennsylvania operation came from the Maryland operation’s market.
On the other hand, the court denied the Maryland house’s motion to dismiss the case, and in doing so rejecting at least two basic trademark arguments by the Maryland defendants. The first involved intent: although Maryland’s “Field of Screams” may not have intended to mislead anyone in using the same name as Pennsylvania’s haunted mansion, the Maryland proprietors could still be guilty of infringement. The court also rejected an argument that the difference in quality between the two operations undercut the plaintiff’s a trademark claim.
Finally, the court noted that the distinctiveness of the name “Field of Screams” and its associations, while perhaps subject to permitted use by the Maryland operation due to prior use, may still be strong enough to be recognized in the operation’s home market of Pennsylvania.
Kate Tummarello is a Research and Social Media Intern with Mirsky & Company and a reporter at Roll Call/Congressional Quarterly. Follow Kate on Twitter @ktummarello. Andrew Mirsky of Mirsky & Company contributed to this post.
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