SAN FRANCISCO—Kink Academy bills itself as a "comprehensive library of sex-ed videos for adventurous, consenting adults." Kink University, on the other (though similar) hand, offers students a chance to "Learn BDSM Technical Skills & Theories From Respected Teachers In The Kink Community." And therein lies the problem: The company that owns the trademark to Kink Academy, Balance Studio, is suing Cybernet Entertainment, the company that owns Kink.com, of which Kink University is a part, for trademark infringement—and as far as U.S. District Court Judge Donna Ryu is concerned, the arguments given by each side are too complex for her to rule in Cybernet's favor on its Motion for Summary Judgment.
And Judge Ryu's analysis of the conflict is pretty thorough. She traces the origin of Kink Academy's trademark application beginning back in 2007 and outlining the company's dealings with the U.S. Patent & Trademark Office (USPTO) that stretched over more than three years, with the USPTO finally allowing a trademark on the graphic image but not the words "Kink Academy," which it felt were too genericallly descriptive.
Judge Ryu also found that although Kink as a company was founded in 2006, it didn't begin operating Kink University until 2014—and had its own trademark application to the USPTO rejected because there was "a likelihood of consumer confusion between 'Kink University' and Plaintiff’s Kink Academy word and logo mark." Among other similarities, the USPTO found that, "In this case, despite the differences in the marks, the terms UNIVERSITY and ACADEMY, each coupled with the dominant component KINK, convey the same idea, i.e., a traditional institute of higher learning juxtaposed next to the informal slang term for an unusual sexual preference. Therefore, the marks are similar in sound, appearance, and commercial impression." That, along with the similarity in graphics and services offered, required the USPTO to reject Kink University's application.
It was that finding that apparently impelled Balance Studio to sue Cybernet for trademark infringement, claiming that "Defendant continues to infringe Plaintiff’s Kink Academy word and logo mark by using the confusingly similar 'Kink University' mark, and that the Kink University website is 'designed to take advantage of the significant name recognition and goodwill surrounding Kink Academy and its products.'" Cybernet has filed a counterclaim against Balance, also for trademark infringement—and it moved for summary judgment in the Kink Academy case, which is what Judge Ryu ruled against last Thursday.
Cybernet's main argument in attempting to invalidate Balance Studio's trademark is essentially "We were here first," the "we" being Kink, which was founded a year before Balance opened Kink Academy and three years before it tried to trademark its mark. Trouble is, according to law in the Ninth Circuit, a trademark can't be split in two, and the fact that the words "kink," "academy" and "university" all have "secondary meanings" that have nothing necessarily to do with either company makes the problem that much stickier.
"To the extent that Defendant’s invalidity argument focuses on the words 'Kink Academy,' Defendant must not only establish that they are descriptive, but that they lack secondary meaning," Judge Ryu stated. "Defendant has made no attempt to do so. More importantly, in any event, such an argument does not hold water because plaintiff owns rights in a composite mark, which must be considered in its entirety."
Cybernet presented some other arguments, claiming that Balance Studio didn't intend the mark to represent a school when it first applied for it, and that the company misrepresented the use of the mark when it first applied for trademark status with the USPTO—and that anyway, Kink has seniority in use of the term "Kink." However, since the facts of the case as presented in the pleadings must be uncontested in order for her to find for one party or the other in summary judgment, Judge Ryu ruled that she was unable to grant Cybernet's Motion.
Next stop: Federal district court and a trial, unless the parties can settle their dispute out of court.
