Hoverfly Technologies, Inc., an aerial drone manufacturer, filed a complaint on Monday in the Eastern District of Michigan against defendant Hoverfly, Inc. for trademark infringement and unfair competition alleging that the defendant infringed the plaintiff’s HOVERFLY mark in connection with its similar goods and services.
Hoverfly Technologies asserted that it has used its HOVERFLY mark “in interstate commerce continuously since 2010,” which was registered and issued in 2012. Hoverfly Technologies asserted that since 2010 it has continued to sell goods and/or services throughout the U.S. and it has “made a significant investment” to promote its HOVERFLY mark. Moreover, it has maintained its website since 2010 which displays its mark. Additionally, Hoverfly Technologies claimed that it “is the national senior user of the HOVERFLY Trademark.” Consequently, Hoverfly Technologies contented that because of its history and continued use of the HOVERFLY mark in interstate commerce, it “possesses protectible common law trademark rights in the HOVERFLY Trademark.” As a result, the plaintiff claimed that because of this investment in time, money and effort and its sales, the mark “is strong, has acquired value, and is well-known to the consuming public and trade as identifying and distinguishing the source of Hoverfly’s goods and services.” However, Hoverfly Technologies averred that in 2018 it “inadvertently did not file a ‘Section 8’ declaration of continued use with the USPTO.”
Meanwhile, the plaintiff claimed that “in early 2017, Defendant recognized that Hoverfly’s federal registration for the HOVERFLY Trademark had or may lapse despite Hoverfly’s continued use of the HOVERFLY Trademark.” Moreover, with this purported knowledge, the defendant allegedly filed a trademark application with the United States Patent and Trademark Office (USPTO) in April 2017 “for the same (word) mark – Hoverfly – as Hoverfly’s HOVERFLY Trademark.” As a result, according to plaintiff Hoverfly Technologies, defendant Hoverfly’s trademark “is identical or confusingly similar to Hoverfly’s HOVERFLY Trademark in appearance, pronunciation, connotation and overall commercial impression.” Furthermore, defendant Hoverfly is in a closely related business to plaintiff Hoverfly Technologies, namely, drone photography and video services. Additionally, the plaintiff claimed that the defendant uses similar marketing channels, such as the internet, and their websites have similar names. Moreover, Hoverfly uses the HOVERFLY mark to identify its services, including on its website and social media. However, Hoverfly Technologies proffered that Hoverfly “is not authorized…to advertise, distribute, sell, offer to sell, or facilitate the sale of any goods or services bearing the HOVERFLY Trademark.” Also, the plaintiff claimed that while the defendant has a registered trademark, the plaintiff is the senior user of the mark. Plaintiff Hoverfly Technologies also contended that the defendant’s use of the HOVERFLY mark in connection with its goods and services is likely to cause consumer confusion; the plaintiff even provided specific examples of supposedly real consumer confusion in the complaint. Hoverfly Technologies asserted that Hoverfly has knowingly disregarded the plaintiff’s trademark rights.
Hoverfly is accused of violating the Lanham Act, specifically for the likelihood of consumer confusion and for false designation of origin as consumers may be misled as to the origin of their good or service. The defendant is also accused of common law trademark infringement and common law unfair competition violations
Hoverfly Technologies has sought declaratory judgment; to preliminarily and permanently enjoin the defendant from further infringement and unlawful conduct; to remove the marks from the defendant’s goods, services, and other materials; an award for damages; an award for costs and fees; for the defendant’s trademark registration to be cancelled; and other relief.
Hoverfly Technologies is represented by Bewersdorf PLC and Thompson Coburn LLP.
