Federal Court Issues Injunction Prohibiting Publication’s Use of Metro Trademark


July 10, 2002


Dan Pulcrano 408.200.1302

Duffy Carolan 415.276.6585

SAN JOSE, Calif. — A Federal District Court in Oakland has issued a preliminary injunction to stop Surfmet, Inc. of San Jose from using the trademarks and trade dress of a competitive publication, Silicon Valley’s Metro.

The order was announced in a written opinion by United States District Judge Claudia Wilkenof the Federal court’s Northern District.

Metro, which has published weekly for 17 years and is the leading weekly newspaper in Silicon Valley, has held a California trademark since 1991, and received a Federal trademark on the name of its web service Metroactive in 2000. Metro also publishes Metro Santa Cruz, Oakland’s Urbanview and the North Bay Bohemian.

SurfMet Inc. operates a website called “SurfMetro.com” and has published a magazine called “The Wave” since July 2001. The Wave features the www.surfmetro.com web page address prominently in its promotional materials, newsracks and publication. The biweekly tabloid also uses the domain name “metrosurf.com” as well as the word “Metro” in the meta-tags and code of its website, causing search engines to deliver SurfMetro’s pages in response to queries for Metro.

Metro’s attorneys contended that SurfMetro’s behavior created confusion in the marketplace. The court agreed, saying, “Metro has produced evidence of actual confusion on the part of Metro readers, advertisers, job applicants and club promoters.”

“This is a very competive business and we expect competition. We just want it to be fair,” said Dan Pulcrano, Metro Newspapers CEO. “We have invested a lot in building a strong, credible name and the values it stands for.” “Stealing Metro’s trademark and using it to enter the market and gain distribution and readership just went too far. We warned them several times, but they refused to respect Metro’s intellectual property rights. So we sought the court’s help in stopping their behavior,” said Duffy Carolan of the law firm Davis Wright Tremaine.

“We’re glad Judge Wilken agreed with our position. Her order is a very strong start to this trademark infringement action. It was well reasoned and well supported, and we are confident that the Ninth Circuit will agree,” Carolan added.

In granting the injunction, the court determined that “the METRO mark and the SURFMETRO mark are extremely similar,” noting that “The SURFMETRO mark contains the word ‘Metro,’ which is the entirety of the METRO mark. Though the SURFMETRO mark contains the additional word, ‘Surf,’ and is therefore a much longer word, it capitalizes the first letter of ‘Metro,’ producing greater similarity to the METRO mark.”

Wilken added that “the marks are visually similar,” and “while there are slight differences in the marks…, the overall impression of the two marks is somewhat similar.”

“A review of the two papers reveals that they are very similar in format and content,” Wilken wrote. Metro has been the leading arts and entertainment publication in the Silicon Valley area since 1985. SurfMetro began publishing last year. Like Metro before it, it includes club and events listings, a calendar of entertainment picks organized by day, short dining and movie reviews, a horoscope, a love advice column and classified ads.

The court also ruled that the Metro mark was “distinctive” and that both Metro and Metroactive “are fairly strong marks.” The judge wrote: “The Metro mark has been used in Silicon Valley for over seventeen years to identify Metro, and has been extensively marketed and promoted.”

“SurfMetro’s use of the SURFMETRO mark is likely to cause confusion with Metro’s use of the METRO and METROACTIVE marks. SurfMetro’s use of the SURFMETRO mark likely infringes Metro’s METRO and METROACTIVE marks. The court therefore grants Metro’s motion for a preliminary injunction prohibiting SurfMetro from using the METRO or METROACTIVE marks, or any marks, names or logos confusingly similar to Metro’s marks, including the SURFMETRO mark,” Wilken wrote in the 24-page opinion.

SurfMetro is further “enjoined from using the METRO mark as part of its domain names — “metrosurf.com” and “surfmetro.com,” Wilken added.

The district court has been a leader in the field of intellectual property rights in cyberspace. The order referred to the 1999 Brookfield Communications ruling, noting “The Ninth Circuit has pointed out that the use of the web as a marketing channel is ‘a factor that courts have consistently recognized as exacerbating the likelihood of confusion.’” In arguing before Judge Wilken at the pre-injunction hearing, Surfmet asked if they could use the trademark for other uses, to which Wilken replied that she may allow them to use the mark “if you want to use it to sell toothbrushes in Des Moines—maybe.”

Surfmet Inc. has filed a petition to stay the injunction, contending it would cause “immediate and irreparable injury” to its business and its customers.