09-3379 Stayart v. Yahoo! Inc.

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Intellectual Property
Trademark infringement; standing

Before a plaintiff may assert a claim under the Lanham Act, she must have a commercial interest to protect.

“Relying on cases in other circuits, Stayart argues that because her activities include advocacy and boycotts she is engaged in ‘services’ and ‘commercial activities’ and therefore has standing to pursue her claim. In support of this position, she cites to a case from the Second Circuit in United We Stand Am., Inc. v. United We Stand, Am. NY, Inc., 128 F.3d 86, 89 (2d Cir. 1997) that discusses non-profit groups that engage in ‘service’ and that affect ‘commerce.’ The problem with that argument is that United We Stand was brought under a different section of the Lanham Act: 15 U.S.C. § 1114(1)(a) or, as it is otherwise know, § 32 of the Lanham Act. That section and its language are distinct from § 43. Specifically, § 32 gives ‘[n]onprofit and charitable corporations . . . the same protection against confusing use of their names as is given to business corporations.’ 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 9:5 (4th ed. 2010). But unlike § 43, § 32 requires that a plaintiff seeking protection have ‘a registered mark.’ 15 U.S.C. § 1114(1)(a); see Guaranty Bank v. Chubb Corp., 538 F.3d 587, 593 (7th Cir. 2008). Stayart has not raised a claim under § 32, and even if she had, it would still fail because she does not claim that her name is a registered trademark. Therefore, United We Stand is inapplicable and Stayart’s activities do not give her standing under § 43.”

Affirmed.

09-3379 Stayart v. Yahoo! Inc.

Appeal from the United States District Court for the Eastern District of Wisconsin, Randa, J., Manion, J.

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